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Consider a fairly typical IP assignment clause, such as

I understand that the provisions of this Agreement requiring assignment of Inventions to the Company do not apply to any Invention that I have developed entirely on my own time without using the Company’s equipment, supplies, facilities, trade secret information or Confidential Information (an “Other Invention”) except for those Other Inventions that either (i) relate at the time of conception or reduction to practice of such Other Invention to the Company’s business, or actual or demonstrably anticipated research or development of the Company or (ii) result from any work that I performed for the Company.

The phrase

actual or demonstrably anticipated research or development of the Company

can be interpreted quite broadly, especially when it comes to AI related IP. For example, if an employer uses AI for a specific purpose, could independent research into AGI, on an employee's own time, be considered related to "anticipated research" of the company? So, here are my questions:

  1. Can I protect any IP related to AI from a future employer by signing an agreement with an LLC I own, that assigns any current and future AI related IP, created by me, to the LLC (in perpetuity, throughout the universe, etc)? Then, during contract negotiations with a new employer, have them acknowledge and sign off on that encumbrance?

  2. If so, what acknowledgments, clause(s), or addenda would need to be added to an employment contract to avoid conflict with the existing assignment with my own LLC?

  3. And lastly, in the IP assignment to my own LLC, how feasible would it be to add an unambiguous, narrow exception that allows me to voluntarily assign AI related IP to another employer, without the contract being superseded by a contract with that employer?

Obviously, they could choose to not hire me instead, but let's consider that to be outside the scope of the question.

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    It is not obvious to me what the LLC is adding here. If you assume that the potential employer would be fine employing you with this encumberence in place, it should be just as happy to amend their agreement to allow you to retain whatever IP you would have assigned to the LLC.
    – Justin Cave
    Commented Apr 7 at 20:35

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Absent issues of unconscionability, illegality, or public policy, a person can make any contractual agreements they want. They can even agree to contractual promises with multiple parties that put them in a position where they must choose to breach one of the contracts.

  • X can agree to assign to the LLC any IP that they want to assign to the LLC.

  • the LLC can agree to let X not assign all IP to the LLC and instead allow X to assign selected IP to E.

  • If X is seeking to avoid breach of contract, X's contract with E should not promise things that X cannot accomplish without violating other contracts, such as X's contract with the LLC.

A contract to assign is not an actual assignment of the IP. X promising to assign IP to the LLC does not free X from a promise to assign that same IP to E. It would be up to the promissor to decide which contract to be in breach of.

The AI aspect (and even the IP aspect) to your question are red herrings and do not change the legal analysis.

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  • In the case of conflicting agreements, is there precedent for which company would prevail in being assigned ownership? I could promise to assign the IP to two companies, and I may be personally liable for breach of contract to one company, but how do the courts typically view the issue (especially in the case where the original contract was disclosed to the new employer)?
    – Snafu450
    Commented Apr 7 at 14:22
  • @Snafu450 I think the point is that you're damned if you do, damned if you don't -- either way you breach one of the contracts. So it's best not to put yourself in this position in the first place. And as an answer to your original question, it seems like "no -- while you may solve one problem, you create another."
    – Barmar
    Commented Apr 8 at 22:03
  • "The AI aspect (and even the IP aspect) to your question are red herrings and do not change the legal analysis." They might if the IP in question us being generated by the AI, and is thus (probably) public domain.
    – nick012000
    Commented Apr 11 at 10:34

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