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Making Sense Of An Employee IP Agreement
"There are many articles that suggest that it is unlikely that the company would ever try to enforce its IP agreement, much less succeed. But I was not comfortable entering a situation where the company might in the future claim exclusive rights to one of my "inventions," and prevent me from using it somewhere else.
When it came right down to it, my list of "inventions" looked pretty meager. These "inventions" are not really inventions at all, but rather extensions and adaptations of publicly available software. Using the word "invention" to refer to such extensions is unfortunate; it is an attempt to impose an ownership structure onto software ideas, and contradicts my experience of how software development really works. For the full story, see The Employee IP Agreement."
John kept careful track of his thoughts (and a lot of emails, phone calls and in-person meetings) while he sought to forge an IP agreement that he'd hoped would be workable for him and his client. It's a sobering story, so be thankful he's put it to writing. 1/3 warning, 2/3 good advice.
I was approached by a recruiter wanting a Senior Unix Systems Administrator for a new e-commerce company. He liked the fact that I also had experience in Cisco and C coding. He claimed I was "very hot for them" (though this may be usual recruiter puffing). I OK'd passing on my resume, and he called back the very next day with "They want to talk to you ASAP, but the CEO is flying in on Friday so we have to schedule then". So I said "OK". He then said "Great, I'll FAX over the NDA to you now, and you can just bring it with you when you go in".
I asked him what was in it (since I didn't have FAX and would have to read it when I arrived) and he said "Oh, the usual stuff, that you won't use any of their ideas". "And what if their ideas are ideas I'm already working with?". "That could be a problem". "Then we'll need to negotiate the terms to protect both parties". "They can't do that, the CEO is there for just one day a week, and they are interviewing a lot of people that day". "Then it sounds like they have no need for me". "But they do, your experience is fantastic". "Sorry, but if they don't care about being fair with my rights, I doubt it will be a place I'll end up staying at, and I might not be able to find employment after I leave if I blindly sign unnegotioated terms".
At that point we politely canceled the interview. But I don't know at this point how the recruiting firm will treat this.
I did interview with another company, which had a special part of the interview where they discussed their coming market strategy. They had a very reasonable NDA to have access to that part, and it was optional. The NDA simply prohibited disclosure of what I would see and hear at that presentation. So not every employer is bad. We need to just avoid those who are.
now we need to go OSS in diesel cars
-snellac
A couple of places I have contracted for tried to put clauses in my NDA/non-comp agreement that basically said that if they sued me to enforce the agreement I would have to pay their legal expenses incurred by them in suing me. What my lawyer advised me was to change such clauses to read that the "prevailing party" would be entitled to recover reasonable legal expenses from the losing party. So essentially, this took a very bad clause that would have been detrimental to me (they could sue me on a whim and I would have to pay for it) into something which protected me doubly from frivolous lawsuits (because if their case isn't solid they would stand to lose a good chunk of money reimbursing me).
I just wanted to throw this idea out because I think that there are plenty of "standard" clauses like this which are bad for contractors, and it helps to have a good response in your arsenal to turn it around into a positive. If we have enough people in the industry insisting on reasonable terms, companies won't be able to ignore us because _we_ will then be setting the standard terms by our shear numbers. Besides, if a company doesn't agree to the change that I mentioned above it should be a pretty big warning sign - enough to make you walk away.
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Free P2P Backup, Windows & Linux
while not exactly the same thing you're dealing with, i am reminded of a no-compete agreement that was circulating in my company a while back.
basically, our parent company wanted us all to sign a no-compete agreement that basically said we couldn't work in IT after we had left (for one reason or another) said company. It was obviously a career destroyer, and we did have several people leave the company immediately upon seeing this agreement.
what did the rest of us do? exactly what every current employee of every company that wants to screw their employees do - tell them to go screw themselves.
This sounds like a very union-esque concept. and, perhaps, it is. But i can't stress enough the fact that if every employee of a company fails to sign an agreement (to do|not to do) X, then there's nothing the company can do. They can threaten all they want, they may even fire one or two people just to show how sharp their sword is. But, at the end of the day, the company will be forced to scrap the agreement.
I would have advised employees of our friends prospective employer to do the very same. That, combined with a very small influx of new personell might bitchslap the company upside the head and make them realize that their policies are unfair and aren't making them any friends in the software biz.
FluX
After 16 years, MTV has finally completed its deevolution into the shiny things network
"It is seldom that liberty of any kind is lost all at once." -David Hume
But, companies may not realize the trouble they ask for. If they own everything you work on, then they are liable for everything you do. In my case, the WC insurer tried to deny liability claiming that my work was not the sole cause of my tendinitis, but it was from my computer usage at home. If they have the right to take what I work on at home, then they are on the hook for that liablity too. Workers comp. coverage covers for injury that is caused by your work (usually the test is 50% of more contributing).
Fight Spammers!
Seems to be the one here
The reality of these agreements is far, far from their apparent legal intent. The reality is that companies who are concerned about IP in this way ant just one thing in practice: to maximize their ability to have an apparently solid basis for lawsuits, in order to be able to gain injunctions and other "remedies" against parties which are capable of competing with them. On the surface, this might seem reasonable, but in practice, such claims are often very unsound, and could often be successfully challenged in court. However, employees and ex-employees typically do not have the financial and legal resources to fight such cases. As a result, what companies really gain by these agreements is a strategic edge in the game of "my overall legal position is stronger than yours", which allows them to bully ex-employees into not doing anything even remotely close to competing with them, and in some cases not even pursuing ideas that the employee had prior to joining that company.
Also, as to your assertion that most of what programmers do doesn't qualify as "invention", try telling that to the Patent Office! Unfortunately, the legal environment is currently such that you can get a patent for many, many things that to any reasonable person, should not qualify as an invention. As such, it is dangerous to sign away rights when in fact, your dumb idea about using a single button-click to place an order on a website could in fact be incredibly valuable IP, in this distorted Kafkaesque world of VC-funded rich thugs with lawyers.
Rule 2: Not all people are good at all things.
Rule 3: Clint Eastwood said "A man's got to know his limitations".
Get expert advice if it's important. If you're installing a switch in a network, you'll ask an expert. I have a CPA I trust to do my taxes, I have an auto mechanic I trust not to gouge me when fixing my cars, I have an agent for my book cotnract negotiations, I have an attorney I trust to have my interests in mind when I ask for advice because I'm not as good at what they do as they are, and I acknowledge that.
If you're signing a legal document, get advice from a lawyer. If they won't let you get legal advice before signing (as in claiming the document is "company proprietary" or some similar excuse, they may well be sneaking something into the document you wouldn't like.
When a company was trying to hire me a short while back, I was handed a several-page IP agreement at a company that wanted me, that required me to list everything I'd ever done, and that any innovations, to prior work or not, done during my time of employment, whether on or off worktime, belonged to the company. Their attitude (it was a small and privately owned, but very well known Java development shop) was they'd "been burned" in a previous business by one of their guys leaving & stealing everything, so they were just protecting themselves. This agreement was significantly farther-reaching than I felt comfortable with, and was one of the several reasons I became convinced I was dealing with untrustworthy and unethical people - we parted ways shortly thereafter.
When it came right down to it, my list of "inventions" looked pretty meager. These "inventions" are not really inventions at all, but rather extensions and adaptations of publicly available software. Using the word "invention" to refer to such extensions is unfortunate; it is an attempt to impose an ownership structure onto software ideas, and contradicts my experience of how software development really works.
One of your civil rights is the right to practice your trade, unless you are breaking the law while doing it. Just because a stupid law comes up that interferes with your trade, doesn't mean your rights aren't being violated either.
Just because corporations would like to change the way most software gets developed does not mean they can hamper the intellectual inquiries of individual software developers in order to glean off every iota of their creativity.
Not free speech case- civil rights case. Try litigation under this approach. Or, does anyone know if such civil rights approaches have worked with intellectual property cases?
Goat sex free since 2001
I've faced exactly this situation. I believe I may have a solution..
Before I begin work and sign at a new company, I assign all property rights to my Mother. Yup, good ole Mom.
So on paper, she has an *exclusive* license to the property. She can license, sell, assign, etc atany time. I can't sell my own code without herpermission. However, I can revoke her license to these properties at any time, but only in writing.
This agreement includes a very broad disclosure of 'properties of interest'. The 'properties' range from mere ideas to actual programs. Obviously, these sorts of disclosures and contracts should never contain trade secret info.
This agreement came up 6 months into my employment with a certain large and litigious e-commerce company.
A few months before I started working, I documented a decent internet business idea. BTW, I get paid for engineering, not business ideas.
Six months into my employment, I went up the channels to see if we could make use of this idea.
Of course, I ended up in legal.
They weren't very cooperative, mainly because they they thought they had me by the balls. They basically wanted me to just give them the idea (since I "couldn't do anything else with it anyway")..
Knowing that wasn't going to happen and that the discussion was going to go nowhere, I told them that I'd already assigned all rights to the idea to my Mom for safe keeping prior to my start date.
And she could sell to anyone.
At that point, the VP of legal became very aggitated and asked her patent clerk/ip-guy if he knew anything about that. He did not. They decided that they were 'very exposed' and ended the meeting. They didn't really want to talk to me much after that.
I just hope my Mom doesn't have another rummage sale..
Are there any attorneys who would like to comment on such agreements?
Thanks,
Legal Hack
freelunch@hotmail.com
If a potential employer wants any rights in anything you do that is not done on their time and won't remove such a clause, then you need to Run Away, Run Away!. Even if they do remove it for you, you might be working with other people for whom they have not. Even then it could be a very bad situation.
I do think an employer has a right to make sure you are not stealing their ideas (including those they have paid you to create for them) for your own private benefit. A mechanism for them to be confident you are not doing that is something you and they will have to agree on. Be sure to agree on it in advance. Maybe sure your entire agreement is concluded all at once as they may no longer be interested once you have agreed to their terms and are trying to negotiate your terms afterwards.
And, BTW, IANAL, though I do have one. You have to get your own.
now we need to go OSS in diesel cars