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Does Drawing on Experience Infringe on Other's IP?
Daniel Paull asks: "I recently asked one of our developers to draw up a design for a specific component. After a few hours he returns telling me that he'd solved a very similar problem a previous place of employment and that they had developed a "neat" solution. The developer then became concerned that a ground-up re-implementation of these design patterns and principals may infringe on the other companies intellectual property or breach some copyright laws. This developer is talented and experienced - that's why we hired him. The question is, at what point does 'drawing on experience' cross the line and invade others IP?"
when he knowingly violates a patent.
There's no need to reinvent the wheel every time a new problem must be solved. System architectures, code implementation, design diagrams.. all these build on previously established models. It wouldn't be possible to develop a program if each time you solved a problem, you had to implement the solution in an entirely novel way...
Moderation totals that amuse me for one of my posts: Flamebait=1, Insightful=2, Funny=2, Overrated=1, Underrated=1
The answer depends upon way too many variables that aren't supplied within the question.
The answer to this question in any form is way too specific for certain circumstances to be answered in the general case.
Did the last company file a patent on the method? Does the last company view the solution as a trade secret? How 'obvious' is the solution to someone skilled in the field? Etc, etc, etc.
Possible simple solution: have him describe the implementation and let someone else acutally write the code.
... but I stayed at a Holiday Inn Express last night.
But really, since when did "Ask Slashdot" become "Free Advice for those who don't want to ask their Lawer?". Talk to your lawer and see where you really stand (or at least where your lawer can defend).
Well, let's draw on other industries here.
When I worked for a good-sized privately owned oil change shop we had what they called "Procedures". The book of Procedures was treated like an addendum to the bible, or replacing it entirely. A buddy of mine that worked there left to work for a competitor, but he continued to use the Procedures, and to implement many of them in the new shop. However, he made changes where he thought they were needed, dropped some that made little sense. Otherwise, though, the shop did things the "" Way.
Now, this is different than blatantly stealing the stuff because he used the methodology, rather than a straight-away rip-off. He could have taken a copy of the procedural guidelines to his new job and just told them to use it. That would've been theft. However, he took them, and in his mind, enhanced them. Also, he made situational changes for implementation.
Now, if you write a program for one company, then leave. You go to another company. The new company now needs the same problem solved, so you write ANOTHER program. The nature of a problem and a solution is that frequently the solutions people come up with are very similar when applied to the same problem.
I'm not even approaching the sense of patenting algorithms. It makes as much sense as patenting a philosophy and requiring everyone who agrees to pay royalties. So, whether the system works the way I think it should I do not know.
Dave
The answer is, at the point that your attorney tells you that it will. Seriously, this is a question for an attorney. You've clued into the fact that it's a legitimate legal question, so go ask a legal professional.
In general all IP protection mechanisms (copyright, patents, trademarks) are supposed to cover implementations, not ideas. In case of software algorithms things become messy; separating idea from implementation seems to be a hard thing to do (esp. for US pat. office...), but in theory the basic idea should not be patentable; copyright protects specific implementation and trademarks shouldn't be applicable?
Unfortunately, since the decision to allow business methods to be patented (and even when allowing algorithms) the line has become blurrier than ever. :-/
Finally keep in mind that using experiences in itself never infringes IP; at most it could violate his previous job contract (and even that is unlikely to hold in court). I know this sounds obvious but it needs to be emphasised. Thus that person can explain the idea -- patents are not trade secrets after all -- and then you may consider whether the method in question might be protected or not, and proceed appropriately. The exception would be if you were planning to do complete clean room implementation of a system, but that doesn't seem to be the case?
I like paying taxes. With them I buy civilization -- Oliver Wendell Holmes
Its infringing on someone's IP when the "experience" resulted in a patent being granted on it.
I rejoice that there are owls.
Does drawing on experience infringe on others' intellectual property?
No. Inspiration does not count as stealing. Mind the slippery slope.
--
For me, the answer comes down to the difference between 'experience' and 'proprietary knowledge'. Experience comes from being given a problem and designing/creating/inventing my own solution/implementation. Proprietary Knowledge comes from looking at or learning about a solution to a problem that I, myself, did not create but exists within the organization I belong to.
In other words, did the developer 'experience' the process of developing the solution the first time, or 'get' the knowledge from outside?
Of course, this has to be tempered with the 'obviousness' guide that the USPTO seems to like to ignore. I mean, there are only so many different ways to implement lots of common components (how many times have you implemented an RTC based on a periodic interrupt?), and regardless of who developed the solution, I don't think any of them really belong to any organization as "proprietary IP" because they are too obvious. (In the language of the USPTO, they fail to be "novel").
It's a difficult balance. Unfortunatly, the only "official" guidance on the topic comes from patent-infringmenet lawsuits, which are just so much fun... :)
Matt
The basic rule is sort of a balance between preventing a previous employer can't keep an employee from making a living and preventing an employee from taking intellectual property which he has legally agreed not to disclose outside the bounds of the agreement, i.e. "stealing the technology" from the owner of the IP.
As a programmer for hire/consultant on WinXX boxes, I have often implemented the same exact solutions for a subsequent customer, but not once have I used code from a previous project, because my particular agreements state that any code I wrote belonged to the company paying for my services.
On the other hand, all of my Linux code is inherently reuseable (none of it currently in the wild, by the way -- too limited in scope for wide use) because of the GPL, which implies that I can use the exact code in a later assignment, and anybody who uses my code can do the same thing -- so long as it remains GPL.
The final rule I use to protect myself is, "when in doubt, ask." Ask the former employer, or the current company's legal counsel, etc. The ass-u-me principle, ya'know.
...Open Source isn't the only answer -- but it's almost always a better value than the alternatives...
I once worked for a company that all of a sudden decided that they wanted all their IT staff to sign a contract stating that *all* intellectual property (whether IT-related or not... even stuff like songs and literary works) created by the employee, whether done at work or at home, automatically became property of the company and if done at home, then the employee was obligated to secure all applicable copyrights/patents/trademarks/etc at the employee's expense and hand them over to the company and if any legal troubles arised from this then the employee was also obligated to pay for all company's legal defense costs in the matter.
Needless to say that I never signed the damn agreement and had acquired a new job before next payday, and even got over $10K/yr more salary at the new job too.
That evil company is now bankrupt after the dotcom bust... seems like they never could manage to hire or retain any good IT talent. Gee I wonder why?
We should kill any lawyer that uses the term IP.
IANAL, but at least in California (and, I hear, many other states), the legal precedent is that any IP an employee can carry in his or her mind, that employee may then freely use in any further job regardless of NDAs or the like (which thus become unenforceable in this regard). Patents, being federal law, would trump this, but that's about it.
(This has to be tongue-in-cheek, but since it's currently modded up as "insightful"...)
So, I get sued by my ex-employer if I use my experience, or fired by my current employer if I don't? The same current employer that forced me to sign an NDA/non-compete when they hired me (or, better yet, shortly thereafter)? Here in NC, I'm told that an employee manual you have never read can be interpreted as a legally binding document.
Am I a slave yet?
An interesting light on this is that employees seem to get fucked worse than contractors in this area. Every IT company I've worked for has had stupid, draconian, and illegal-under-NZ-law contracts and refused to budge from them, citing the advice of "employment experts" - who are presumably not lawyers.
But every contract gig I've had has been very clear and limited around these things' my current client is a bank, for example, and there's nothing stopping me from working for another bank next week so long as I don't reveal confidential information.
What sucks most of all around this (for employees) is that it's yet more evidence that company loyalty is a one way street.
I have been involved with a lot of designers (not only code design but real world design, like chairs and furniture's). Whenever they "invent" a new design they want to own it. Every thing else is a cheep copy. Now how does this apply to the current situation? Well if you design a lamp, what are you really doing? Do you come up with something quite new? A lamp is a lamp! Someone else invents the material you use! The form of the lamp is inspired by something else! (Everyone I have talked to has admitted this. Truly unique idea is extremely rare.)
So where do a code design come from? I my daily work as both an IT architect and consultant I'm faced with inventing solutions to suit specific client needs. 80% of my code is copied (more or less) from previous pieces of code. Often when I do write code from scratch, its because the previous collection of "stolen" pieces need to be cleaned up or optimised. The design patterns I use are based on best practice (or if I invent something new, a collection of best practices).
In computer science I learned a method called divide and conquer. It's a basic concept, that if you can divide you problem into two problems, and divide these into two problems etc... you'll end up with tiny problems that can easily be solved (typically by one or two lines of code). If you look at any complex program, design pattern etc, this is what you will find. The problem has been broken down to small solvable pieces. And these pieces are not original. Now the work of breaking down the complex problem, is that IP? Now that's what I'm hired to do as a consultant.
When it comes to solving solutions from scratch, its based on my experience. But what is that, besides a collection of knowledge gain by study, reading, daily life etc... Have I ever really invented something worth calling "My intellectual property"?
If I code in C++ or Java, someone else has invented both languages. But the design of the langue influence deeply upon the design I'm implementing. Now you may say that the idea of OO is really original, and could be classified as IP (luckily no one has done so). But is OO not just inspired by the real world? I many of the teach books I have seen examples of OO have been described as elements from the real worlds (insects inherited into flying insects into bees etc... or cars... you probably can list a lot of examples from the books you have read). So can OO be classified as an original idea to be patented?
Now this is where it goes wrong. Copyrights was originally only based on the specific instance of a piece of art, book etc. Then it expanded into patents and now into IP. At some point it will collapse. Now if anyone can provide me with an idea that could be classified as original, and not based on some other piece of information, method, idea... I would like to hear about it.
Now before this patent, copyright, IP collapse (and I believe it will at some point) a lot of lawyers may earn a lot of money going to court. This is an industry on its own today.
So this is where we stand. In a world where lawyers prey on the society of knowledge. They don't provide anything, they don't produce anything... but they do stop a programmer from trying to implement the correct solution for a client out of fear.
Just try to count the number of comments referring to "go see a lawyer", "slashdot is not a free advisory service" etc...
-:) Oh no - not again.
www.rednebula.com
If you want to protect then you patent or copyright it. If you haven't done either, then it is public knowledge. I'm surprised that no one has ever challenged NDA's and other employment IP contracts under the Thirteenth Amendment. For those that are unfamiliar:
Amendment XIII
Section 1. Neither slavery nor involuntary servitude, except as a punishment for crime whereof the party shall have been duly convicted, shall exist within the United States, or any place subject to their jurisdiction.
Section 2. Congress shall have power to enforce this article by appropriate legislation.
Just a Tuna in the Sea of Life
Folks,
/.
This big of advice in the parent post should be attached as a standard repy for all legal issues brought up on
When it comes down to it get real "paid for" legal council. As they will know the ins and outs and now how to handle these things much better than you or I (unless of course, you are a lawyer).
"Don't mess with him, he taunts the happy fun ball."
Copyrights: you can't copyright an idea only a particular expression of it. Unless you literally copy source code, you are fine.
Patents: it doesn't matter WHO uses it -- if it's patented you need a licence if you use the exact design that is patented. Use the same precautions for this employee as any other, and if you find something patented in the design you'd like to use, modify your own design until it isn't equivalent.
Trade Secrets: The employee should know specifically what information of his old employer was proprietary. His NDA with them does not bind you unless you knowingly attempt to participate in his misappropriation. He is a big boy, he can keep himself on the ethical side. You have absolutely no duty to help his former company keep their secrets. That's what the CA DeCSS case was all about: even if B misappropriates A's trade secret, if C obtains it from B without knowing it was misappropriated, then C can post it to the internet with impunity.
Non-Compete clauses: Your employee already works for you. If your company competes directly against his last employer, then he (not you) would already be in violation. Since his former employer has not already sued him, this is likely not the case. His participation in a particular project is unlikely to affect this.
There really isn't any reason to worry about this employee any more than any other. The only relevent thing the law prevents your company from doing is infringing a patent, so don't do that, but that is true regardless your employees. If an employee violates an NDA and you aren't aware of it, then that is solely his problem to worry about.
It is important to ask the right people. But, just as with engineers, they (lawyers) are not all equally qualified either.
And how many times have you heard someone say they have their own "in house computer expert" but they can never tell you what that person's expertise really is?
Does it matter?
Well. Yes it does.
If the expert is proficient in Cobol a C++ question may be a foul ball or strike out.
The point here is one of most difficult decisions that anyone has to make is to consult with the right people at the right time. That is a really tough call to make. You are always tossed between "I do not need to talk to this expert or that expert" and "if I always called the consultants, I'd be broke by the end of the day".
Well, yes, it is sort of like that.
And, then you have companies such as Microsoft who either do not hire competent legal help or they do not listen to them. Or, their ego gets in the way. Or, they simply take huge legal risks because some lawyers think they can get their client out of any mess.
I have often said that I doubt "my opinions" on the antitrust cases is very different from that of the Microsoft lawyers. Now, if you check my web site you will quickly conclude that the public statements made by Microsoft's lawyers differ quite a bit. But, I seriously doubt that what they say publicly matches what they advised Microsoft. Those conversations are private and will never be made public. But, I know there is a very big difference between what you tell a client in private and what you may say publicly.
The point here being that if you are doing anything based upon public statements made by Microsoft's lawyers, you have been mislead if not defrauded. You could say about the same with the State's lawyers or even the DOJ's lawyers. But, they have less reason to falsify their public statements. And, they even have an obligation not to mislead the public because that is who they are supposed to represent. The DOJ has failed in that regard however and has deliberately mislead both the public and the federal courts. Why they have done so is not clear. But, the fact they have done so is clear.
So be careful trying to learn the law from lawyers representing clients. Or, even non-lawyers.
NexuSys - Linux support by the best
I figure property is something you can put a fence around. This is true for things like your land, your stuff and even Patents and Trademarks. Its also true for trade secrets but that involves having the fence go around every one that works on the project too. In the past IBM used to solve this by the concept of life long jobs. Now that the compaines break backed down on that, I think they have backed down on their ability to preserve their secrets as well.
One thing that needs to be settled (and could be soon) is what is public domain. Remember all the congresscritters singing on the steps? The copyright for that song is owend by a group that gives the money to the Boy Scouts. That performance was viewed by billions of people and according to Congressess on rules, they owe. Or they could contend that since they sang the song fomr memory that its in the public domain. The trick is to get congress to have to make that decission.
IF you broke a contract, you still haven't committed a crime.
Considered harmful.
You are either:
1. Not in managemnet.
2. Unsuccesfully in management.
Why? Because you are dealing with people. Not robots and part of what you hire an employee for is to tell you when it can't be done and why.
I'm sorry, I'm to tired to be witty at the moment so this message will have to do.
At the moment I work in premium design, where confidentiality and IP are deemed pretty important. If your employee signed an NDA/confidentiality and property agreement for his last job, it should clearly answer any of those concerns. It should cover anything to do with copyrights, so-called "trade secrets" and even how long he has to wait before seeking employment with a potential competitor.
:)
And if he didn't sign one, that company obviously didn't care enough. Open season in that case
As mentioned before though, you cannot copyright an idea or concept. To directly infringe the other company's IP would be to do a cut and paste job.