Confidentiality & Intellectual Property Agreement
Additionally, I am hereby provided with notice of the Federal Defend Trade Secrets Act, 18 U.S.C. § 1833(b), pursuant to which (1) no individual will be held criminally or civilly liable under Federal or State trade secret law for the disclosure of a trade secret (as defined in the Economic Espionage Act) that: (A) is made in confidence to a Federal, State, or local government official, either directly or indirectly, or to an attorney; and made solely for the purpose of reporting or investigating a suspected violation of law; or, (B) is made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal so that it is not made public; and, (2) an individual who pursues a lawsuit for retaliation by an employer for reporting a suspected violation of the law may disclose the trade secret to the attorney of the individual and use the trade secret information in the court proceeding, if the individual files any document containing the trade secret under seal, and does not disclose the trade secret, except as permitted by court order.
Schedule A
Comprehensive List of Any Pre-Existing Intellectual Property
Pre-Existing Confidentiality, Non-Compete, Non-Solicitation or Other Similar Agreements
Additionally, I am hereby provided with notice of the Federal Defend Trade Secrets Act, 18 U.S.C. § 1833(b), pursuant to which (1) no individual will be held criminally or civilly liable under Federal or State trade secret law for the disclosure of a trade secret (as defined in the Economic Espionage Act) that: (A) is made in confidence to a Federal, State, or local government official, either directly or indirectly, or to an attorney; and made solely for the purpose of reporting or investigating a suspected violation of law; or, (B) is made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal so that it is not made public; and, (2) an individual who pursues a lawsuit for retaliation by an employer for reporting a suspected violation of the law may disclose the trade secret to the attorney of the individual and use the trade secret information in the court proceeding, if the individual files any document containing the trade secret under seal, and does not disclose the trade secret, except as permitted by court order.
To the extent it is applicable, under Section 743 of the Consolidated and Further Continuing Appropriations Act, the U.S. Government is prohibited from using certain appropriated funds for a contract with any entity that requires employees or subcontractors to sign internal confidentiality agreements or statements that would prohibit or otherwise restrict such employees or subcontractors from lawfully reporting waste, fraud or abuse to a designated investigative or law enforcement representative of a Federal department or agency authorized to receive such information. Accordingly, nothing in this Agreement – or in any other internal BNSF confidentiality agreements, statements, or policies – prohibits or otherwise restricts me from lawfully reporting any waste, fraud or abuse to a designated investigative or law enforcement representative of a federal department or agency authorized to receive such information. The provisions contained in this Agreement that prohibit or restrict disclosing internal Confidential Information do not apply to communications by me lawfully seeking to report waste, fraud or abuse to a designated investigative or law enforcement representative of a federal department or agency authorized to receive such information.
G. No Conflict. I acknowledge that BNSF intends that my employment not conflict with any valid contractual or other legal obligations that I might owe to any prior employer or other person, such as under a confidentiality, non-compete, non-solicitation or similar agreement. I hereby represent that:
1. I am not subject to any such valid confidentiality, non-compete, non-solicitation or other similar agreement, except as disclosed Schedule A hereto, and
2. I have not been asked by BNSF to disclose or use, and will not disclose or use, while employed by BNSF, any confidential information belonging to a current or prior employer or other person whose confidential information I may not legally disclose or use.
H. Miscellaneous.
1. My obligations under this Agreement survive the termination of my employment with BNSF as provided for herein. This Agreement can only be amended or modified in a writing signed by a duly authorized BNSF officer and me (or as otherwise permitted by this Agreement). I agree that BNSF may notify any of my future employers or other entities about my obligations under this Agreement.
2. To the extent permitted by applicable law, the parties agree that, if a court determines that any provision of this Agreement is invalid or unenforceable, then the court shall automatically reform it to the maximum limitation permitted by applicable law. If any provision of this Agreement cannot be made valid and enforceable by reformation, then it shall be severed and the remaining provisions of this Agreement shall be unaffected and remain in full force and effect to the fullest extent permitted by law.
3. This Agreement is governed by and shall be construed and enforced in accordance with laws of the state in which I primarily reside when last employed by BNSF, excluding that state’s choice-of-law principles.
4. I understand that my employment with BNSF is “at-will” and nothing in this Agreement constitutes a contract of employment with BNSF.
5. I expressly agree that this Agreement, including the rights and obligations hereunder, may be transferred and/or assigned by BNSF without my consent at BNSF’s sole discretion. I further agree that this Agreement is for the benefit of and may be enforced by BNSF and its present and future successors, assigns, subsidiaries, affiliates, and purchasers. I may not assign this Agreement or my obligations herein.
6. This Agreement shall be considered made on the date I sign it, which shall be the effective date of this Agreement unless entering into this Agreement was or is a condition of my initial employment with BNSF in which case the terms of this Agreement are understood to be entered into and operative upon the inception of my employment (whether reduced to writing on that specific date or not) (the “Effective Date”).
7. If I executed or in the future execute other written agreements relating to the subject matters addressed herein, and/or in the event I enter into other written agreements that contain provisions similar to the provisions contained herein, all such provisions shall be interpreted to provide BNSF with cumulative rights and remedies, and the benefits and protections provided to BNSF under each such agreement shall be given full force and effect. No amendment, waiver, or revocation of this Agreement shall be effective unless set forth in writing expressly stating the amendment, waiver, or revocation and signed by an authorized officer of BNSF (or as otherwise permitted herein).
8. BNSF and I agree that my electronic signature included in this Agreement is intended to authenticate this writing and to have the same force and effect as an original signature by hand in ink. I may decline the use of an electronic signature and instead elect to sign a paper copy of this Agreement by hand in ink. BNSF assents to and accepts this Agreement upon me providing my signature either electronically or by hand.
9. I understand that I am directed to Schedule B for important state-specific modifications to this Agreement, if any, that may apply to me.
G. No Conflict. I acknowledge that BNSF intends that my employment not conflict with any valid contractual or other legal obligations that I might owe to any prior employer or other person, such as under a confidentiality, non-compete, non-solicitation or similar agreement. I hereby represent that:
1. I am not subject to any such valid confidentiality, non-compete, non-solicitation or other similar agreement, except as disclosed Schedule A hereto, and
2. I have not been asked by BNSF to disclose or use, and will not disclose or use, while employed by BNSF, any confidential information belonging to a current or prior employer or other person whose confidential information I may not legally disclose or use.
H. Miscellaneous.
1. My obligations under this Agreement survive the termination of my employment with BNSF as provided for herein. This Agreement can only be amended or modified in a writing signed by a duly authorized BNSF officer and me (or as otherwise permitted by this Agreement). I agree that BNSF may notify any of my future employers or other entities about my obligations under this Agreement.
2. To the extent permitted by applicable law, the parties agree that, if a court determines that any provision of this Agreement is invalid or unenforceable, then the court shall automatically reform it to the maximum limitation permitted by applicable law. If any provision of this Agreement cannot be made valid and enforceable by reformation, then it shall be severed and the remaining provisions of this Agreement shall be unaffected and remain in full force and effect to the fullest extent permitted by law.
3. This Agreement is governed by and shall be construed and enforced in accordance with laws of the state in which I primarily reside when last employed by BNSF, excluding that state’s choice-of-law principles.
4. I understand that my employment with BNSF is “at-will” and nothing in this Agreement constitutes a contract of employment with BNSF.
5. I expressly agree that this Agreement, including the rights and obligations hereunder, may be transferred and/or assigned by BNSF without my consent at BNSF’s sole discretion. I further agree that this Agreement is for the benefit of and may be enforced by BNSF and its present and future successors, assigns, subsidiaries, affiliates, and purchasers. I may not assign this Agreement or my obligations herein.
6. This Agreement shall be considered made on the date I sign it, which shall be the effective date of this Agreement unless entering into this Agreement was or is a condition of my initial employment with BNSF in which case the terms of this Agreement are understood to be entered into and operative upon the inception of my employment (whether reduced to writing on that specific date or not) (the “Effective Date”).
7. If I executed or in the future execute other written agreements relating to the subject matters addressed herein, and/or in the event I enter into other written agreements that contain provisions similar to the provisions contained herein, all such provisions shall be interpreted to provide BNSF with cumulative rights and remedies, and the benefits and protections provided to BNSF under each such agreement shall be given full force and effect. No amendment, waiver, or revocation of this Agreement shall be effective unless set forth in writing expressly stating the amendment, waiver, or revocation and signed by an authorized officer of BNSF (or as otherwise permitted herein).
8. BNSF and I agree that my electronic signature included in this Agreement is intended to authenticate this writing and to have the same force and effect as an original signature by hand in ink. I may decline the use of an electronic signature and instead elect to sign a paper copy of this Agreement by hand in ink. BNSF assents to and accepts this Agreement upon me providing my signature either electronically or by hand.
9. I understand that I am directed to Schedule B for important state-specific modifications to this Agreement, if any, that may apply to me.
AGREED: BNSF RAILWAY COMPANY | EMPLOYEE Signature: Printed Name: Title: Date Signed: |
Schedule A
Comprehensive List of Any Pre-Existing Intellectual Property
| Registration or Application Number | Date Created, Published, Registered or Applied For | Title | Description | Co-Owners (Y/N) |
Pre-Existing Confidentiality, Non-Compete, Non-Solicitation or Other Similar Agreements
| Agreement Title | Signatory Parties | Description | Agreement Effective Date | Agreement Expiration Date |
As an employee of BNSF Railway Company (“BNSF”), I will have access to certain confidential BNSF information and agree to treat that information as described in this Confidentiality & Intellectual Property Agreement (“Agreement”). As a condition of my employment or continuing employment with BNSF and in consideration of my employment or continuing employment with BNSF, my receipt of Confidential Information (defined below), and for other good and valuable consideration, the receipt and sufficiency of which I acknowledge, BNSF and I intending to be legally bound hereby agree as follows:
A. Confidential Information Covered by this Agreement. “Confidential Information” means all of BNSF’s information related to its business and operations that is not generally known to the general public and which is maintained as confidential. “Confidential Information” includes, but is not limited to,
1. any BNSF trade secret as defined by federal and applicable state law;
2. current or past BNSF employees’ compensation information and performance reviews;
3. marketing and business development strategies;
4. non-public budgets and financial information;
5. any BNSF software development, data, and information, proprietary formula, methodology, architecture, code, model, compilation, program, device, method, technique, or process;
6. client and prospective client lists, preferences, agreements, and negotiations for services; and
7. products and services in development by BNSF.
“Confidential Information” also includes the same types of information of Berkshire Hathaway, Inc. (“Berkshire”) and any of BNSF’s and/or Berkshire’s subsidiaries or affiliates. “Confidential Information” further includes information provided to BNSF by third parties under an obligation or expectation of confidential treatment (“Third Party Information”). “Confidential Information” can take the form of documents or information in whatever form or medium. “Confidential Information” shall not include any information that has been voluntarily disclosed to the public by BNSF (except where such public disclosure has been made by me without authorization) or that has been independently developed and disclosed by others, or that otherwise has entered the public domain through lawful means. Private disclosure of otherwise Confidential Information to parties BNSF is doing business with for business purposes shall not cause the information to lose its protected status under this Agreement.
B. My Treatment of Confidential Information. I acknowledge that all Confidential Information is the sole and exclusive property of BNSF. As an employee, I will have access to and may create Confidential Information that impacts BNSF’s goodwill. I understand and agree that the unauthorized use or disclosure of BNSF’s Confidential Information may irreparably harm BNSF’s legitimate business interests and damage its goodwill.
I agree at all times during my employment and thereafter:
1. to protect and hold all Confidential Information in strictest confidence;
2. to not, directly or indirectly, use any Confidential Information for my own or a third-party’s benefit (other than in the proper performance of my job for BNSF);
3. to not, directly or indirectly, disclose any Confidential Information to any person who is not a BNSF employee or otherwise authorized to receive such information pursuant to an obligation of confidentiality (and then only to the extent consistent with the terms of that person’s confidentiality obligation); and
4. to not, directly or indirectly, remove, copy, destroy, damage, or delete any Confidential Information except in the proper performance of my job for BNSF.
If I am not a management official or member of BNSF’s management, this Agreement does not prohibit me from using information acquired through lawful means regarding the wages, benefits, or other terms and conditions of employment of individuals employed by BNSF for any purposes of protected activity under the Railway Labor Act (“RLA”) (as described more below) unless the information is entrusted to me in confidence by BNSF as part of my job duties.
I understand and agree that I am not permitted to recreate records of Confidential Information from memory or retain copies of Confidential Information in any form after the last day on which I am employed by BNSF, regardless of the reason for the separation of my employment, including all voluntary and involuntary reasons (the “Termination Date”). I understand that I should have no records of any kind in my possession or control with which to refresh my memory after the Termination Date.
On the Termination Date, or at BNSF’s earlier request, I will immediately return to BNSF all Confidential Information (and not thereafter recreate any of the Confidential Information without BNSF’s permission) and any other BNSF property that came into my possession (including computers, phones, and other electronic devices) as a result of my employment with BNSF. I may, however, retain my own personal compensation and benefits-related records.
C. The Ownership and Treatment of Intellectual Property.
1. Definitions. The following definitions shall apply to this Agreement:
a) “Intellectual Property” means any and all of the following in any jurisdiction throughout the world: patents, trademarks, copyrights, domains, improvements, inventions, developments, trade secrets, know-how, original works of authorship, and/or derivative works, including any registrations, applications, disclosures, and any common law rights, whether or not patentable, trademarkable, copyrightable, registerable, or otherwise legally protectable.
b) “IPR” means any and all privilege, right, title, and interest throughout the world in and to any and all Work Product.
c) “Prior Inventions” means any Intellectual Property, patented or unpatented, that I, alone or with others, conceived, created, invented, developed, reduced to practice, or caused to be conceived and or caused to be reduced to practice prior to the earlier of (i) commencement of my employment with BNSF or (ii) when I first provided services to BNSF. I have listed all such Prior Inventions on Schedule A attached hereto and if no Schedule A is attached or if Schedule A is left blank, then I represent that I have no such Prior Inventions.
d) “Technology” means all inventions, prototypes, products, machines, articles of manufacture, equipment, devices, apparatus, systems, software, source code, methods, procedures, processes, techniques, work product, use, compounds, formulations, compositions of matter, material, designs, drawings, or configurations of any kind, or any improvements thereof, technical information, data, domains, invention records, research records and reports, development reports, experimental and other engineering reports, production specifications, project reports, quality control reports and specifications, product plans, developments, modifications, inventions, financial or other business information, and any other information, whether or not considered proprietary.
e) “Work Product” means all the Intellectual Property and Technology, whether created, conceived, created, invented, developed, reduced to practice, or caused to be conceived and or caused to be reduced to practice prior or acquired individually or jointly with others, whether or not during working hours, by me during my employment with BNSF, and, to the extent permitted by applicable law, for twelve (12) months thereafter, that relate to the actual or anticipated business of BNSF or used BNSF’s Confidential Information or other equipment, property, or time. “Work Product” does not include Prior Inventions listed on Schedule A.
f) Work for Hire. All Work Product shall be, to the extent permitted by law and as applicable, deemed “works for hire” or “works made for hire,” within the meaning of the United States Copyright Act of 1976, for the benefit of BNSF. All Work Product shall also be, to the extent permitted by law and as applicable, deemed “inventions for hire,” for the benefit of BNSF.
2. Assignment of All IPR and Work Product. I hereby irrevocably grant, assign, transfer, quitclaim, and forever release unto BNSF, its successors, licensees, sub-licensees, and assigns, all IPR, Work Product, and associated goodwill. I also hereby waive and irrevocably quitclaim to BNSF any and all claims, of any nature whatsoever, that I now have or may hereafter have for misappropriation or infringement of any and all IPR or Work Product, including, the right to sue and collect damages for all past, present, and future claims for infringement of the IPR or Work Product, and any other claims relating to or arising from the IPR or Work Product. I further expressly acknowledge that any services previously performed by myself in connection with the Work Product shall also be governed by the terms of this Agreement, regardless of when such services were performed. However, I acknowledge and agree that I have been provided with notice of state-specific intellectual property assignment laws that may modify this Section C(2), as outlined in Schedule B.
3. Moral Rights. I irrevocably waive, to the extent permitted by applicable law, any and all claims that I may now or hereafter have in any jurisdiction to all rights of attribution, paternity, integrity, modification, disclosure, withdrawal and any other rights throughout the world that may be known as or referred to as “moral rights,” “artist’s rights,” “droit moral,” or the like (“Moral Rights”). If Moral Rights cannot be assigned under applicable law, I hereby waive and agree to not enforce any and all Moral Rights, including, without limitation, any limitation on subsequent modification, to the extent permitted under applicable law.
4. Other Rights. To the extent I have any rights in the Work Product or any other Intellectual Property rights that cannot be assigned for any reason, I hereby unconditionally and irrevocably waive the enforcement of such rights against BNSF affiliates, successors, licensees, sub-licensees, and assigns. The rights provided in this Section are in addition to, and shall not be deemed to limit, restrict, or constitute any waiver by BNSF of any rights of ownership to which BNSF may be entitled by operation of law.
5. Assistance. I agree, both while an employee of BNSF and thereafter, to assist BNSF and its owners and affiliates, at BNSF’s sole expense, in any and all attempts to obtain patents, copyrights, and/or trademarks or other intellectual property protection on any all Work Product and hereby agree to execute all documents necessary to obtain such rights in the name of or to transfer such rights to BNSF. I shall communicate to BNSF any known facts related to all Work Product; and, at the expense of BNSF, I shall testify in any legal proceedings, sign all lawful papers, execute all divisional, continuation, continuation-in-part, reissue, and substitute applications, make lawful oaths and declarations, join any lawsuit, and generally do everything possible to vest and/or perfect title in BNSF and to aid BNSF and its owners and affiliates to obtain and enforce the IPR in all countries. If BNSF is unable for any reason, after reasonable effort, to secure my signature on any document needed in connection with the actions specified in this Section, I hereby irrevocably designate and appoint BNSF and its duly authorized officers and agents as my agent and attorney in fact, which appointment is coupled with an interest, to act for and on my behalf to execute, verify and file any such documents and to do all other lawfully permitted acts to further the purposes of this Section with the same legal force and effect as if executed by me.
6. No Implied Licenses. I understand that this Agreement does not and shall not be construed to grant me any license or right of any nature with respect to any IPR, Work Product, or any Confidential Information, or other tools made available to me by BNSF and its owners and affiliates.
7. Prior Inventions. I acknowledge and agree that I may not use, under any circumstances, any Prior Inventions in the scope of my employment with BNSF, unless BNSF and I agree otherwise in writing as to a particular Prior Invention. However, if, I nonetheless use any Prior Inventions in the scope of my employment with BNSF, to the extent I am able to do under applicable law, I hereby grant to BNSF, in such circumstances, a perpetual, irrevocable, nonexclusive, transferable, world-wide, royalty-free license to use, disclose, make, sell, offer for sale, import, copy, distribute, modify and create works based on, perform, and display such Prior Invention, and to sublicense third parties in one or more tiers of sublicensees with the same rights.
8. Disclosure. I will make a full and prompt disclosure to BNSF of all Work Product and retain and provide access to all notes related thereto, which shall be BNSF’s sole and exclusive property.
D. The Relationship of this Agreement to Other BNSF Policies and Rules. I understand that my obligations under this Agreement are in addition to my obligations under the BNSF Code of Conduct and BNSF’s Policies and Rules. In the event of an express conflict between a provision of this Agreement and a provision of the BNSF Code of Conduct, a Policy or Rule, the terms of this Agreement shall apply.
E. BNSF’s Remedies. I agree that BNSF may not have an adequate remedy at law and may be irreparably harmed if I breach or threaten to breach my obligations under this Agreement. I also agree that in the event of a breach or threatened breach of this Agreement:
1. BNSF is entitled to equitable relief (without the need to post a bond or prove actual or special damages), such as a temporary restraining order, a temporary injunction, a permanent injunction, or specific performance, in addition to all other legal and equitable relief to which it may be entitled;
2. BNSF is entitled to recover its reasonable attorney’s fees and all costs and expenses associated with enforcing this Agreement; however, if this Agreement is subject to the law of a state that would convert this recovery of attorney’s fees provision to a reciprocal obligation or an obligation where the prevailing party would recover fees and costs, then such recovery of attorneys’ fees and costs provision shall not apply and each party will bear its own attorneys’ fees and costs; and
3. BNSF (on behalf of itself and any of its affiliates) may seek to enforce this Agreement and I will not assert that BNSF or the BNSF affiliate is not a proper party, that any remedy may not be awarded to such entity, or that not all proper or necessary parties have been joined.
F. Protected Conduct. Nothing in this Agreement prohibits me from:
1. reporting to, filing a complaint with, communicating with, responding to an inquiry from, cooperating with, providing truthful information to, or otherwise participating or assisting in an investigation being conducted by any governmental agency or regulatory body (including the Securities and Exchange Commission, Department of Labor, and the Equal Employment Opportunity Commission) regarding a possible or alleged violation of law or regulation and without prior authorization of or notice to BNSF;
2. giving truthful testimony or making statements under oath in response to valid legal process (such as a subpoena) in any legal or regulatory proceeding;
3. discussing or disclosing sexual harassment or other sexual assault;
4. revealing Confidential Information to my attorney; or
5. if I am not a management official or member of BNSF’s management, then nothing in this Agreement shall be construed or applied in a manner that interferes with, restrains, or waives any rights protected under the Railway Labor Act (45 U.S.C. Secs. 151-188). This includes, but is not limited to, the right of employees to: organize, form, join or assist labor organizations; engage in lawful concerted activity for the purpose of collective bargaining; communicate with fellow employees or union representatives regarding wages, benefits, hours, or other terms and conditions of employment; participate in proceedings before the National Mediation Board (NMB), judicial body or any other government agency concerning matters arising under the RLA. Nothing in this Agreement prohibits an employee from exercising rights protected by the RLA, including in lawful picketing, striking, or filing legal actions in accordance with RLA procedures.
Schedule B
State-Specific Modifications
The following shall apply to modify provisions of this Agreement, where applicable, based upon the controlling law pursuant to Section H(3) or as expressly described below:
If it is required by applicable law for my nondisclosure restrictions to be enforceable, the post-employment restrictions on my use and disclosure of Confidential Information will expire two (2) years after the Termination Date. This time limit will not apply to BNSF’s trade secrets or Third Party Information. BNSF’s trade secrets will remain protected for as long as they qualify as trade secrets under applicable law. Third Party Information will remain protected for as long as allowed under the laws and/or separate agreements that make it confidential.
California
If I primarily live or work California or if California law otherwise applies to this Agreement, then the following applies to me: (a) nothing in the Agreement shall be construed to prohibit me from disclosing information about unlawful acts in the workplace, such as harassment or discrimination or any other conduct that I have reason to believe is unlawful; (b) Section E(1) is modified to state, “BNSF may be entitled to equitable relief such as a temporary restraining order, a temporary injunction, a permanent injunction, or specific performance, in addition to all other legal and equitable relief to which it may be entitled;” and (c) the invention assignment obligations in this Agreement shall be limited so as to comply with Cal. Lab. Code, § 2870, which provides that: “(a) Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of their rights in an invention to their employer shall not apply to an invention that the employee developed entirely on their own time without using the employer’s equipment, supplies, facilities, or trade secret information except for those inventions that either: (1) Relate at the time of conception or reduction to practice of the invention to the employer’s business, or actual or demonstrably anticipated research or development of the employer; or (2) Result from any work performed by the employee for the employer.” This notice shall satisfy Cal. Lab. Code §§ 2870-2872.
Colorado
If Colorado law applies to this Agreement, then the following applies to me: (a) nothing in this Agreement prohibits me from disclosing information about workplace health and safety practices or hazards or requires me to abide by a workplace policy that would limit or prevent such disclosures; (b) further, nothing in this Agreement prohibits an employee or prospective employee from disclosing or discussing, either orally or in writing, any alleged discriminatory or unfair employment practice; and (c) the Confidential Information restrictions in this Agreement do not prohibit disclosure of information that arises from a worker’s general training, knowledge, skill, or experience, whether gained on the job or otherwise, information that is readily ascertainable to the public, or information that a worker otherwise has a right to disclose as legally protected conduct.
Delaware
If Delaware law applies to this Agreement, then the following applies to me: The invention assignment obligations in the Agreement “shall not apply to an invention that the employee developed entirely on the employee’s own time without using the employer’s equipment, supplies, facility or trade secret information, except for those inventions that: (1) relate to the employer’s business or actual or demonstrably anticipated research or development; or (2) result from any work performed by the employee for the employer. To the extent a provision in an employment agreement purports to apply to the type of invention described, it is against the public policy of this State and is unenforceable. An employer may not require a provision of an employment agreement made unenforceable under this section as a condition of employment or continued employment.” Delaware Code, Title 19 § 805
Georgia
If Georgia law applies to this Agreement, then the following applies to me: The definition of “Confidential Information” shall not include data or information (a) which has been voluntarily disclosed to the public by BNSF, except where such public disclosure has been made by me without authorization from BNSF, (b) which has been independently developed and disclosed by others, or (c) which has otherwise entered the public domain through lawful means.
Illinois
If Illinois law applies to this Agreement, then the following applies to me: The invention assignment obligations in this Agreement shall be modified so as to comply with Illinois Statutes Chapter 765, Property § 1060/2 (the “Illinois Inventions Act”), and will not require the assignment of my rights in an invention for which no equipment, supplies, facilities, or trade secret information of BNSF was used and which was developed entirely on my own time, unless (a) the invention relates (i) to the business of BNSF, or (ii) to BNSF’s actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by me for BNSF. This notice satisfies 765 ILCS 1060/1-3 of the Illinois Inventions Act.
Kansas
If Kansas law applies to this Agreement, then the following applies to me: The invention assignment obligations in this Agreement will not require the assignment of my rights in an invention for which no equipment, supplies, facility or trade secret information of BNSF was used and which was developed entirely on my own time, unless: (1) the invention relates directly to the business of BNSF or to BNSF’s actual or demonstrably anticipated research or development; or (2) the invention results from any work performed by me for BNSF. This notice satisfies Kansas Code § 44-130.
Minnesota
If Minnesota law applies to this Agreement, then the following applies to me: The invention assignment obligations in this Agreement will not require the assignment of my rights in an invention for which no equipment, supplies, facility or trade secret information of BNSF was used and which was developed entirely on my own time, and (1) which does not relate (a) directly to the business of BNSF or (b) to BNSF’s actual or demonstrably anticipated research or development, or (2) which does not result from any work performed by me for BNSF. Minn. Stat. 13A §181.78, “Minnesota Inventions Act.”
New Jersey
If New Jersey law applies to this Agreement, then the following applies to me: The invention assignment obligations in the Agreement shall be modified so as to comply with NJ Rev Stat § 34:1B-265 (2017) and will not require the assignment of my rights in an invention for which no equipment, supplies, facility or trade secret information of BNSF was used and which was developed entirely on my own time, and (1) which does not relate (a) directly to the business of BNSF or (b) to BNSF’s actual or demonstrably anticipated research or development, or (2) which does not result from any work performed by me for BNSF.
New York
If New York law applies to this Agreement, then the following applies to me: The invention assignment obligations in this Agreement shall be revised to comply with New York Labor Law Section 203-f and shall exclude any invention that I develop entirely on my own time without using BNSF’s equipment, facilities or trade secrets, except for those inventions that relate at the time of conception or reduction to practice of the invention to BNSF’s business or result from any work performed by me for BNSF.
North Carolina
If North Carolina law applies to this Agreement, then the following applies to me: The invention assignment obligations in the Agreement shall be modified by North Carolina General Statutes § 66-57.1, I “shall not apply to an invention that the employee developed entirely on [their] own time without using the employer's equipment, supplies, facility or trade secret information except for those inventions that (i) relate to the employer's business or actual or demonstrably anticipated research or development, or (ii) result from any work performed by the employee for the employer. To the extent a provision in an employment agreement purports to apply to the type of invention described, it is against the public policy of this State and is unenforceable. The employee shall bear the burden of proof in establishing that his invention qualifies under this section.”
Utah
If Utah law applies to this Agreement, then the following applies to me: The invention assignment obligations in this Agreement shall not require an assignment that would be contrary to Utah Code § 34-39-3 which provides that:
(1) An employment agreement between an employee and their employer is not enforceable against the employee to the extent that the agreement requires the employee to assign or license, or to offer to assign or license, to the employer any right or intellectual property in or to an invention that is: (a) created by the employee entirely on their own time; and (b) not an employment invention.
(2) An agreement between an employee and their employer may require the employee to assign or license, or to offer to assign or license, to their employer any or all of their rights and intellectual property in or to an employment invention.
(3) Subsection (1) does not apply to: (a) any right, intellectual property or invention that is required by law or by contract between the employer and the United States government or a state or local government to be assigned or licensed to the United States; or (b) an agreement between an employee and their employer which is not an employment agreement.
(4) Notwithstanding Subsection (1), an agreement is enforceable under Subsection (1) if the employee’s employment or continuation of employment is not conditioned on the employee’s acceptance of such agreement and the employee receives a consideration under such agreement which is not compensation for employment.
(5) Employment of the employee or the continuation of their employment is sufficient consideration to support the enforceability of an agreement under Subsection (2) whether or not the agreement recites such consideration.
(6) An employer may require their employees to agree to an agreement within the scope of Subsection (2) as a condition of employment or the continuation of employment.
(7) An employer may not require their employees to agree to anything unenforceable under Subsection (1) as a condition of employment or the continuation of employment.
(8) Nothing in this chapter invalidates or renders unenforceable any employment agreement or provisions of an employment agreement unrelated to employment inventions.
Washington
If I am a Washington-based employee or Washington law otherwise applies to this Agreement, then the following applies to me: (a) nothing in this Agreement prohibits me from disclosing or discussing conduct I reasonably believe to be illegal discrimination, illegal harassment, illegal retaliation, a wage and hour violation, or sexual assault, or that is recognized as against a clear mandate of public policy, or the existence of a settlement involving any such event or conduct; and (b) the invention assignment obligations in this Agreement shall be modified so as to comply with Wash. Rev. Code, Title 49 RCW: Labor Regs, Chptr 49.44.140 (the “Washington Inventions Act”) and will not require the assignment of my rights in an invention for which no equipment, supplies, facility, or trade secret information of BNSF was used and which was developed entirely on my own time, unless (a) the invention relates (i) directly to the business of BNSF, or (ii) to BNSF’s actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by me for BNSF. This notice satisfies § (3) of the Washington Inventions Act.
State-Specific Modifications
The following shall apply to modify provisions of this Agreement, where applicable, based upon the controlling law pursuant to Section H(3) or as expressly described below:
If it is required by applicable law for my nondisclosure restrictions to be enforceable, the post-employment restrictions on my use and disclosure of Confidential Information will expire two (2) years after the Termination Date. This time limit will not apply to BNSF’s trade secrets or Third Party Information. BNSF’s trade secrets will remain protected for as long as they qualify as trade secrets under applicable law. Third Party Information will remain protected for as long as allowed under the laws and/or separate agreements that make it confidential.
California
If I primarily live or work California or if California law otherwise applies to this Agreement, then the following applies to me: (a) nothing in the Agreement shall be construed to prohibit me from disclosing information about unlawful acts in the workplace, such as harassment or discrimination or any other conduct that I have reason to believe is unlawful; (b) Section E(1) is modified to state, “BNSF may be entitled to equitable relief such as a temporary restraining order, a temporary injunction, a permanent injunction, or specific performance, in addition to all other legal and equitable relief to which it may be entitled;” and (c) the invention assignment obligations in this Agreement shall be limited so as to comply with Cal. Lab. Code, § 2870, which provides that: “(a) Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of their rights in an invention to their employer shall not apply to an invention that the employee developed entirely on their own time without using the employer’s equipment, supplies, facilities, or trade secret information except for those inventions that either: (1) Relate at the time of conception or reduction to practice of the invention to the employer’s business, or actual or demonstrably anticipated research or development of the employer; or (2) Result from any work performed by the employee for the employer.” This notice shall satisfy Cal. Lab. Code §§ 2870-2872.
Colorado
If Colorado law applies to this Agreement, then the following applies to me: (a) nothing in this Agreement prohibits me from disclosing information about workplace health and safety practices or hazards or requires me to abide by a workplace policy that would limit or prevent such disclosures; (b) further, nothing in this Agreement prohibits an employee or prospective employee from disclosing or discussing, either orally or in writing, any alleged discriminatory or unfair employment practice; and (c) the Confidential Information restrictions in this Agreement do not prohibit disclosure of information that arises from a worker’s general training, knowledge, skill, or experience, whether gained on the job or otherwise, information that is readily ascertainable to the public, or information that a worker otherwise has a right to disclose as legally protected conduct.Delaware
If Delaware law applies to this Agreement, then the following applies to me: The invention assignment obligations in the Agreement “shall not apply to an invention that the employee developed entirely on the employee’s own time without using the employer’s equipment, supplies, facility or trade secret information, except for those inventions that: (1) relate to the employer’s business or actual or demonstrably anticipated research or development; or (2) result from any work performed by the employee for the employer. To the extent a provision in an employment agreement purports to apply to the type of invention described, it is against the public policy of this State and is unenforceable. An employer may not require a provision of an employment agreement made unenforceable under this section as a condition of employment or continued employment.” Delaware Code, Title 19 § 805
Georgia
If Georgia law applies to this Agreement, then the following applies to me: The definition of “Confidential Information” shall not include data or information (a) which has been voluntarily disclosed to the public by BNSF, except where such public disclosure has been made by me without authorization from BNSF, (b) which has been independently developed and disclosed by others, or (c) which has otherwise entered the public domain through lawful means.
Illinois
If Illinois law applies to this Agreement, then the following applies to me: The invention assignment obligations in this Agreement shall be modified so as to comply with Illinois Statutes Chapter 765, Property § 1060/2 (the “Illinois Inventions Act”), and will not require the assignment of my rights in an invention for which no equipment, supplies, facilities, or trade secret information of BNSF was used and which was developed entirely on my own time, unless (a) the invention relates (i) to the business of BNSF, or (ii) to BNSF’s actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by me for BNSF. This notice satisfies 765 ILCS 1060/1-3 of the Illinois Inventions Act.
Kansas
If Kansas law applies to this Agreement, then the following applies to me: The invention assignment obligations in this Agreement will not require the assignment of my rights in an invention for which no equipment, supplies, facility or trade secret information of BNSF was used and which was developed entirely on my own time, unless: (1) the invention relates directly to the business of BNSF or to BNSF’s actual or demonstrably anticipated research or development; or (2) the invention results from any work performed by me for BNSF. This notice satisfies Kansas Code § 44-130.
Minnesota
If Minnesota law applies to this Agreement, then the following applies to me: The invention assignment obligations in this Agreement will not require the assignment of my rights in an invention for which no equipment, supplies, facility or trade secret information of BNSF was used and which was developed entirely on my own time, and (1) which does not relate (a) directly to the business of BNSF or (b) to BNSF’s actual or demonstrably anticipated research or development, or (2) which does not result from any work performed by me for BNSF. Minn. Stat. 13A §181.78, “Minnesota Inventions Act.”New Jersey
If New Jersey law applies to this Agreement, then the following applies to me: The invention assignment obligations in the Agreement shall be modified so as to comply with NJ Rev Stat § 34:1B-265 (2017) and will not require the assignment of my rights in an invention for which no equipment, supplies, facility or trade secret information of BNSF was used and which was developed entirely on my own time, and (1) which does not relate (a) directly to the business of BNSF or (b) to BNSF’s actual or demonstrably anticipated research or development, or (2) which does not result from any work performed by me for BNSF.
New York
If New York law applies to this Agreement, then the following applies to me: The invention assignment obligations in this Agreement shall be revised to comply with New York Labor Law Section 203-f and shall exclude any invention that I develop entirely on my own time without using BNSF’s equipment, facilities or trade secrets, except for those inventions that relate at the time of conception or reduction to practice of the invention to BNSF’s business or result from any work performed by me for BNSF.
North Carolina
If North Carolina law applies to this Agreement, then the following applies to me: The invention assignment obligations in the Agreement shall be modified by North Carolina General Statutes § 66-57.1, I “shall not apply to an invention that the employee developed entirely on [their] own time without using the employer's equipment, supplies, facility or trade secret information except for those inventions that (i) relate to the employer's business or actual or demonstrably anticipated research or development, or (ii) result from any work performed by the employee for the employer. To the extent a provision in an employment agreement purports to apply to the type of invention described, it is against the public policy of this State and is unenforceable. The employee shall bear the burden of proof in establishing that his invention qualifies under this section.”
Utah
If Utah law applies to this Agreement, then the following applies to me: The invention assignment obligations in this Agreement shall not require an assignment that would be contrary to Utah Code § 34-39-3 which provides that:
(1) An employment agreement between an employee and their employer is not enforceable against the employee to the extent that the agreement requires the employee to assign or license, or to offer to assign or license, to the employer any right or intellectual property in or to an invention that is: (a) created by the employee entirely on their own time; and (b) not an employment invention.
(2) An agreement between an employee and their employer may require the employee to assign or license, or to offer to assign or license, to their employer any or all of their rights and intellectual property in or to an employment invention.
(3) Subsection (1) does not apply to: (a) any right, intellectual property or invention that is required by law or by contract between the employer and the United States government or a state or local government to be assigned or licensed to the United States; or (b) an agreement between an employee and their employer which is not an employment agreement.
(4) Notwithstanding Subsection (1), an agreement is enforceable under Subsection (1) if the employee’s employment or continuation of employment is not conditioned on the employee’s acceptance of such agreement and the employee receives a consideration under such agreement which is not compensation for employment.
(5) Employment of the employee or the continuation of their employment is sufficient consideration to support the enforceability of an agreement under Subsection (2) whether or not the agreement recites such consideration.
(6) An employer may require their employees to agree to an agreement within the scope of Subsection (2) as a condition of employment or the continuation of employment.
(7) An employer may not require their employees to agree to anything unenforceable under Subsection (1) as a condition of employment or the continuation of employment.
(8) Nothing in this chapter invalidates or renders unenforceable any employment agreement or provisions of an employment agreement unrelated to employment inventions.
Washington
If I am a Washington-based employee or Washington law otherwise applies to this Agreement, then the following applies to me: (a) nothing in this Agreement prohibits me from disclosing or discussing conduct I reasonably believe to be illegal discrimination, illegal harassment, illegal retaliation, a wage and hour violation, or sexual assault, or that is recognized as against a clear mandate of public policy, or the existence of a settlement involving any such event or conduct; and (b) the invention assignment obligations in this Agreement shall be modified so as to comply with Wash. Rev. Code, Title 49 RCW: Labor Regs, Chptr 49.44.140 (the “Washington Inventions Act”) and will not require the assignment of my rights in an invention for which no equipment, supplies, facility, or trade secret information of BNSF was used and which was developed entirely on my own time, unless (a) the invention relates (i) directly to the business of BNSF, or (ii) to BNSF’s actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by me for BNSF. This notice satisfies § (3) of the Washington Inventions Act.