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Dealing With an Overly-Restrictive Intellectual Property Policy?
An anonymous reader writes "I am very happy with my current job, but there have always been a few ideas for things I've wanted to develop on the side. Ideally I'd keep my day job, reserving mornings, evenings and weekends to see if the side-projects could become viable. The problem is: my employer has an IP policy that states that anything I do while under their employ is theirs, even when I'm off the clock. Does anyone have suggestions about workarounds, magic loopholes, false identity for the side projects? Anything?"
Disclaimer: Where I work they are cool with "moonlighting", with the stipulation being that you must check with legal. Never been in this situation so this is largely guess work based on stories I've heard from others!
The obvious is of course to get a new job. I'm sure lots of people are going to recommend that, but of course it is rarely that simple.. especially in this economy and you like where you are working now.
The less obvious is to negotiate with your employer/your employers legal department. Just be cognisant of the fact that this may inadvertently force you into option 1. If the terms of your employment are there just to cover their ass.. you might be able to work something out if your ideas arn't within their business area. Just keep in mind that you are asking to work on something that you hope will lead to you resigning and pursing full time (I assume) and they may have a problem with that as well.
I guess the real question is, how sold on your own ideas are you? Willing to risk your job?... because I really don't see a way of persuing this that doesn't end there.
There is quite a bit of variation to be found in the practices of companies with regard to this issue.
A good write up is found here: http://www.ieeeusa.org/members/IPandtheengineer.pdf
The article suggest there are two or three broad models of what is acceptable practice in this ares.
First
The Massachusetts Model is so called because it is prevalent in the northeastern United States. It was developed toward the end of the industrial revolution as a response to shop rights. Agreements written on this model tend to imply that the intellectual life of the employee is company property.
Never backed by law, this model is the most restrictive,
The cycle of innovation and renewal is fundamental to a healthy market economy. To foster this cycle, individuals require the same protections for non-work-related intellectual property that employers enjoy for work-related creations. In 1977, Minnesota formalized this concept with a law limiting the enforceable terms of pre-invention assignment agreements. The Minnesota Model adopts the philosophy that while the employer should enjoy protection, it should not come at the expense of today's employee to become tomorrow's new employer.
In California there are similar laws to the Minnesota system:
The State of California followed in 1980, by implementing protection for its famous entrepreneurial culture. As of this writing Utah, Washington, North Carolina, Kansas, Delaware, and Illinois have also promoted new business formation by means of
similar laws
The text of the California law is on the web here. Washington state Here.
Appendix B of the above linked article has a summary of legislation in various states and list of states where such agreements are already limited by state law.
Sig Battery depleted. Reverting to safe mode.
Next time, modify the agreement before you sign it.
Does anyone have suggestions
Oh no, not another "ask a lawyer" question.
As a general rule, this is mostly unenforceable and/or is trivially worked around.
"Science flies us to the moon. Religion flies us into buildings." - Victor Stenger
Yes - explain why you don't like this, and what you intend to do in your spare time that you wish to retain ownership of.
These clauses usually come from a desire that employees don't misappropriate company IP and use it to write something competing. Or for a competitor (where the 'who owns what' question becomes murkier).
Any reasonable employer will write you an exclusion, but likely with a no-compete clause, which is fair enough.
IANAL, but I write the above as an employer, running a tech team of 21.
Setup a basic LLC for yourself. Create the items/ideas under that. Document your time spent to show that it did not conflict with your full time job.
Time to talk to an attorney to see what is legal in your state.
often times the 'restrictions' you are required to sign aren't actually legal and are designed just to scare you, but unless they are challenged they stick.
If you find out its OK, with a company like that breathing down my neck id still document everything i do off hours so i can clearly show it was done on my time, with my materials if it ever came to that point. " Code section created x-date/time" "Receipts of hardware and software", etc.
---- Booth was a patriot ----
Give your employer written notice that you are unilaterally varying the terms of your contract of employment to rescind that part of the policy due to your weekend work on other projects, and that your continued employment will constitute their acceptance of your change. They're pretty unlikely to give a toss about what you get up to on the weekend, thus you'll keep your job and won't have the worry of that policy.
Usually the easiest answer is the most straightforward one: Have you talked to your boss whether they could grant you special dispensation from that IP clause so you can pursue your dream? Everything else would be legally shaky (except if you happen to live in a country like Germany, where AFAIK such a clause would be illegal unless you used company resources for your project or did it on company time). So unless a lawyer tells you that clause is illegal in your contract, the only safe options you have is get your boss to waive that clause (or enough of it to allow your project), or to quit your job. And even when a lawyer tells you it is illegal, you should probably talk to them.
The last thing you want to do is show up at a future new employer after just having sued your previous employer. Nor do you really want to stay at an employer you've had to sue. All contracts eventually rely on trust. If that's not there anymore, you won't enjoy your job much.
After the contract has been signed.
So basically they have you by the short and curlies. But if you do try to hide stuff and manage to make it big time - hope that you make enough to hire a decent lawyer who will tie your current employer in knots. I hear that East Texas can be friendly for that sort of litigation.
OTOH you can always delve into IP that while legal, would be the sort of thing that your current employer would find repulsive. What was that link again? 1 girl, 2 D sized cups???
But one final comment. You say that "I am very happy with my current job", but given that you are trying to circumvent your employment contract I'd argue that you are not happy with your current job.
I am Slashdot. Are you Slashdot as well?
If you signed an agreement saying that you would turn relevant IP over to your employer during your employment there, then not doing so would be unethical. It seems that what you're asking us to do is help you either break the law or be unethical. If your side project is truly not the property of your employer (e.g. you work for a car company and you are inventing a new gardening technique on the side) then you are legally protected to pursue it and patent it yourself.
By the way, the agreement that you signed, almost certainly says that ideas you developed while employed there belong to them, regardless of whether you quit the job to pursue them or not. Not only would it be unethical to do so, they could sue you and get the patent rights. Some clarification on your situation might be nice because I don't really understand why you're asking /. to help you break the law.
The problem is: my employer has an IP policy that states that anything I do while under their employ is theirs, even when I'm off the clock. Does anyone have suggestions about workarounds, magic loopholes, false identity for the side projects? Anything?
Have you actually talked to them about it? Outline the sort of projects you want to work on, see what undertakings they'd need and what they're prepared to agree to. Do you really make a habit of looking for workarounds and loopholes in the agreements you enter into? If that's really your thing then talk to a lawyer, but otherwise talk to your employer and decide whether you want to stay with them or whether you want to purrsue your projects or whether you can amicably do both.
Why is this even legal?
You know, you could simply ask your employer for a waiver for a specific project. They're often happy to do so for anything that's not related to their business. (These kinds of IP policies are often simply to give them the opportunity to make that determination.)
They might impose a few requirements like not using company time or resources, but that's hardly unreasonable.
Then again, since you're asking about creating a false identity, it sounds like they might have very good reason not to trust you on this.
Quit your job. Clearly not your first option as stated in the summary. However, the problem is that any workarounds you use are just likely to work as long as your side project is small and invisible. At some point, if a side project took off, then you would presumably be interested in pursuing that full time and under your own legal name. That's precisely the point at which your employer is going to get interested and start digging. Given the language in your contract, your employer will at least think they have a legal leg to stand on which implies a good chance they'll take you to court. At that point, it becomes a contest between your lawyer and their law team. Thus, your first step is really to ask your lawyer. If you're not willing to pay a small amount to get some advice now, you can expect to wish you had later when the price or lost revenue is much larger.
This is enslavement, your employer is liable to prosecution under US federal law. Look it up, there have been a few prominent cases in the media recently ...
The purpose of existence is to make money.
That's one thing we had to remember when we were doing an after-hours
startup. Everything was on separate machines, no trace of the startup
was to be on the employers systems.
But as always, talk to a lawyer.
Get a lawyer, find out what your options are, then talk to your boss. There is a chance a contract that broad might not be enforceable or that the company lawyer who wrote it was being over cautious and no one has really pointed out to management that as-is is not appropriate.
I was in a similar position once that a company asked me and all other employees after I had been hired and working there for several months to sign a new policy similar to this. I refused, explained my issue with the contract. A few days later I found myself explaining the issue to the company owner and he agreed. They wrote me a new contract (apparently I was the only one that didn't sign) which I found acceptable that didn't try to claim ownership of my off the clock activities.
Personally if they can't accommodate that, I don't care how much you like that job, Anyone that blatantly disrespects your time away from work like that is not worth working for. We have jobs so that we can have the money to do what we want and need when not working, To have money but still not be able to fulfill your wants and needs outside the job kinda defeats the purpose.
You should have negotiated this before you started employment.
Once, when I objected to terms that would have granted the company ownership over everything I did outside of work, they just swapped out that page with another one they had ready. The different terms were there and ready, but just not the default. They were perfectly happy to give me the rights to my own projects, as long as I was willing to ask for them.
It does suck when you didn't pay attention to what you signed, and are stuck in a bad situation, and it can be hard to fix these things after the fact.
Your best option would probably to look for another job, and pay attention to what they are asking you to sign.
Hopefully you don't have any long term non-competes, or other clauses.
Can that be a legal requirement?
If I do something legal in my own time on my own equipment in my own home with my own ideas, it has nothing to do with my employer. Surely that cannot stand up in court?
But I do not have your constitution to 'protect' me.
I'll see your Constitution and raise you a Queen.
Our speculation is worthless. Ask a lawyer. It's their job...
I'm just a law student, but that sounds like a policy that would not stand up to judicial scrutiny. One key factor is the state you are in. For example, California tends not to recognize non-compete agreements while other states do. So it's possible some states would be more likely than others to find your particular IP agreement invalid. I suggest contacting a public interest org like EFF or ACLU to see if they know of any case law in your state that has found an IP agreement like yours invalid.
Seek a new job. Otherwise, if your invention or code makes any money, expect to be sued.
The first step should be to talk to them about it and see if they will revise it for you. I work for a company that took a boilerplate IP Policy and wanted to roll it out (like I'm sure many companies do). When they did this, I talked to them and asked them to change it because the way it was written, they basically controlled anything I did. I cited the fact that they could use it for anything from claiming rights to a novel I would write, to any invention I came up with, to even using it to force me to take down a personal website I designed for myself. They obviously replied with "but we wouldn't do that" so I asked them to change it since they had no plans to ever do any of that. I rewrote the agreement to include anything worked on during company time or anything directly related to company work, and they had no issues with that. If you are happy with your employer, and have a good relationship with them, going tot hem should be your first step. If they are reasonable (which is a big if depending on the company and area of business) they hopefully won't have any issue changing it.
"Information wants to be expensive" - Stewart Brand, the same guy who said "Information wants to be free"
As someone who has been in that situation: go talk to your employer. Some will allow you to modify your employment contract to cover the umbrella case of IP outside of work hours. Some will officially sign over rights to you on a particular side project you're working on. Some simply can't do either, as they have iron-clad contracts with other people who require that clause for rights clarity purposes. Some will offer to partner with you on the project, or otherwise compensate you for the idea but have it within their system.
If you're in one of the states where outside work is generally exempt from these contracts (California, for example), then you probably don't need to go to your employer necessarily. But it will help cut off a potentially expensive lawsuit in the future.
And if you're not in one of the states that explicitly grants exemptions, don't just go ahead expecting that you'll win the legal battle.
The ______ Agenda
"2.3 Assignment of Inventions. Subject to
Section 2.5, I hereby assign and agree to assign in the
future (when any such Inventions or Proprietary
Rights are first reduced to practice or first fixed in a
tangible medium, as applicable) to the Company all
my right, title and interest in and to any and all
Inventions (and all Proprietary Rights with respect
thereto) whether or not patentable or registrable
under copyright or similar statutes, made or
conceived or reduced to practice or learned by me,
either alone or jointly with others, during the period
of my employment with the Company. Inventions
assigned to the Company, or to a third party as
directed by the Company pursuant to this Section 2,
are hereinafter referred to as "Company
Inventions."
2.4 Obligation to Keep Company
Informed. During the period of my employment and
for six (6) months after termination of my
employment with the Company, I will promptly
disclose to the Company fully and in writing all
Inventions authored, conceived or reduced to practice
by me, either alone or jointly with others. In addition,
I will promptly disclose to the Company all patent
applications filed by me or on my behalf within a
year after termination of employment. The Company
will keep in confidence and will not use for any
purpose or disclose to third parties without my
consent any confidential information disclosed in
writing to the Company pursuant to this Agreement
relating to Inventions."
Does this mean if I start developing iPhone apps or set up a blog in my spare time, that would be considered my employer's property?!
When the company has a blanket policy that takes the employee's inventions, it can come to bite them in the ass.
When I was illegally fired by Microsystems, Inc. ("MSI") they took possession of work I did on my own time using my own tools. However, on the workers comp. claim their denial was based on the claim the tendinitis was caused in part by my work at home. Either MSI fraudulently denied the workers comp. claim, or committed fraud by asserting and taking possession of the work I did on my own time.
By having a blanket policy of owning everything you do, the employer could be on the hook for everything you do.
Fight Spammers!
If you aren't using their resources or time I don't think that's legal, and if it is get a new job.
"If any question why we died, Tell them because our fathers lied."
This kind of work condition is absolutely unacceptable.
Circumcision is child abuse.
If you don't actually own the rights to what you are writing, please don't contaminate open source projects by including code owned by your employer.
Cleaning up a contaminated code base is a big pain. Please make sure you own the code, or have the rights to release it before setting it free.
Don't put up with that kind of bullshit, you should of laughed when you read that subservient crap and told them no before you started the job
act like a peasant, get treated like one
If you're in California, call me. :) Mention Slashdot and receive 50% off the initial consultation, normally priced at $0.00 (USD).
geek. lawyer.
Not the media!
"Found guilty by the New York Times, they vowed to appeal their case to the Wall Street Journal".
Have gnu, will travel.
Renegotiate contract, talk to your company about your plans, quit... don't try to cheat your way around a contract you knowingly signed.
I've been open about my private programming endevors with each employer I worked for, before I signed the contracts, and none have ever been a problem. They usually require you to sign a paper which states you can't use company-specific knowledge/IP/etc (which I find understandable), but otherwise I've never been limited to what I can do in my own spare time. Most employers are perfectly reasonable people too.
Then again, the judicial system in my country (Netherlands) aren't particularly fond of "unbalanced" contracts such as EULA's, NDA's and non-competes. From what I know, US laws favor corporate interrests a lot more.
Slashdot social media options: AIM, ICQ, Yahoo, Jabber and Mobile Text. Why no MySpace?
It'll depend in part on how willing your employer is to negotiate those terms, and in part on what the law in your state is. For instance in California you have California Labor Code sections 2870-2872 governing IP agreements. That law trumps anything in the agreement. Since I live and work in CA, I make it a point to mark up any IP agreements with a note about those sections before signing it. You'll want to check the law in your state, depending on what it says you may have more leverage with your employer.
1. Suck it up. You signed the employment contract with the onerous terms. Live with it and try not to mourn your dreams too much.
2.Renegotiate your employment contract. Get the modified terms in writing.
3.Quit and start your own company. Maybe you'll be the next app store millionaire.
Just strike out those bits before you sign it - chances are they don't actualy care enough about them to argue.
Of course since you already have, either find out it is overridden by some applicable law or bad luck.
Don't try and "trick" your way around - while chances are they won't care at all if you happen to luck into the next angy birds/minecraft/facebook/google you can bet those tricks won't hold up when the lawyers come.
Burn a police station (or similar) to the ground - if cought state it was the employers idee and produce your contract. ;)
I am very happy with my current job, but there have always been a few ideas for things I've wanted to develop on the side. Ideally I'd keep my day job
Stop right there and put a period at the end. That's the opening of the letter you send to HR.
The next part is, "But I'll quit if I have to."
Then stop and consider real hard whether this is actually true before you sign your name to it.
Then the ball's in their court. You'll either get canned in short order, or they'll sit down with you and negotiate a contract where you belong to them during business hours but you own your own soul afterward. Which result you get depends on what kind of company it is... Some really do think that owning your whole life like property is the proper order of the world and be offended at your sheer audacity of thinking otherwise. Perhaps if they're paying really well that will be worth it, but if that was the case, you wouldn't be here now, would you?
I personally suggest you reneg even if you live in a state where such IP agreements are invalid. They can still sue you for the rights to your New Big Thing, and you will not have the time or money to fight it even if you'd theoretically win in the end. Get it in clear writing that you own your own time.
As a sometime composer and arranger I was faced with an overly broad IP policy at a previous employer.
The way it was written they could have claimed just about anything that I did including recordings. I asked for a clarification of that clause in my contract and they admitted that it wasn't even legal in my state. It might be worth checking with a lawyer.
Non bene pro toto libertas venditur auro
what happens to open source work? under laws like this I don't thing some places can say you did work on X open source projects and now we own the rights to the full IP of the project.
Don't quit your job ... just yet. And don't start your side project, yet, either.
Do start the hunt for a new job. Investigate the laws of various states you would be willing to move to, to see what kind of negotiating power you might have with potential employers in those states. Only after you have acquired a new job should you resign from your old job.
Whether to tell them this is the reason, or not, is up to you. They MAY want to counter offer. If they do, suggest to them that in addition to matching salary, you want them to replace their IP policy to one that protects employees rights to do things on their own, not on company time, not with company resources, unrelated to company interests as known to the employee, as belonging exclusively to the employee. Also ask for side projects that are related to the company interest to be shared between company and employee 50/50, and that if the company does not exploit the idea in 4 years (this being the test if it really has company interest), it reverts to exclusively owned by the employee.
Or just move on to the better company. If your idea does relate to your previous employer, or is something they are interested in, or competes with them, they will likely have issues with this and could sue your IP infringement (e.g. you knew their technology, etc).
now we need to go OSS in diesel cars
IMHO, of course. There are NDAs and Proprietary Technology agreements that any company can require for specific projects or capabilities. It should end there. The thought that a corporation can own your thoughts, no matter how derivative, is just sad. Then again, so is the currrent state of copyright law. Not much way around IP (and copyright) law without a massive multi-target Pelican Brief operation :-(
https://app.box.com/WitthoftResume Code: https://github.com/cellocgw
You might like to ask legal or HR that if all intellectual property you create whilst employed to them means that they own it whether or not "home made porn" also fits that category (consider that you would otherwise have the copyright over the video and thus it amounts to intellectual property.)
Now if they do want to own that, inform them that you'll need to put the company logo on your home made porn before you upload it to youtube... well, not necessarily upload to youtube, but that ought to get them thinking about exactly how broad they want their reach to be. Rinse and repeat for writing an erotic story.
At this point your employer should be saying that not every piece of intellectual property that you create is theirs. Thus you need for them to determine what exactly they do and do not claim ownership over.
What's likely to be the case is that they'll want ownership of anything and everything related to their business. So if they hire you to work on Linux, then any work you do at home on Linux (be it their version or another), or on BSD or any other operating system would be owned by them. Similarly writing a piece of software that was related to what is already found (or a job performed) there would also be covered.
I've been down this road and it may be that the only option for you is to find another job.
What this really boils down to is that for people that are hobbyists, it can be a bit of a blow to work for some IT companies because it means you lose ownership of whatever it is you would normally do as a hobby. For those that live and eat work only or for whom programming is a work only thing, no problem is present.
Sorry, but you are completely wrong. There is even a term for it:
Renegotiating a Contract.
You can speak with your employer about negotiating an exemption, or new terms entirely.
They are by no means required to renegotiate, but if they do, the new contract replaces the old.
You may want to hire an attorney to draft the modified agreement and/or be present at negotiations.
In professional circles, this sort of thing happens all the time; no need for all the drama being suggested.
--- Generation X: The first generation to have SIG lines inferior to their parents... ---
If you are working off the clock, and not using the employer's resources or facilities, I'm nearly certain this is void. If you're using the employer's resources or facilities, the employer likely has at least partial ownership. You may want to visit a law library and ask the law librarians how to search for materials relevant to your concern, or consult with an employment lawyer.
Slashdot: Playing Favorites Since 1997
I work under a similar, very restrictive IP agreement. I raised the issue of side projects with the corporate lawyer in charge of IP and explained the types of projects I do on the side for fun and profit. While the company does not grant blanket exclusions, they were happy to review them on a project by project basis and grant exceptions.
Their goal was to protect the company's business using standard legal tools. Just like my job requires me to use my skils to the fullest, so does theirs. However, talking through it made it clear that there was no malicious intent.
One important thing to know when doing this: the lawyers represent the company and are ethically bound to put the company's interests first. They won't be able to give you any legal advice. You may want to talk to a lawyer first, just so you have outside counsel.
Also, this is just business for the company. The more you treat as business (and not good vs evil), the better chance you'll have of success.
-Chris
Sorry, but you are completely wrong.
Disagree and you may think I am splitting hairs .. but renegotiating is crafting a new contract .. not negotiating terms on a contract that has been signed.
I am Slashdot. Are you Slashdot as well?
Sorry, but you are completely wrong.
And what I should have added was that if the company doesn't want to renegotiate the contract then the OP is SOL. It takes two to tango, but if one party doesn't want to then you have to suck it up. Its all about power. As one poster put it .. the people who write the contract have the power.
I am Slashdot. Are you Slashdot as well?
I just signed on with a company that has a blanket statement in the contract similar to this. IN fact they also asked to list any prior inventions so they could be exempted. I have several business ideas but these (to me at least) are not 'inventions' so how do I put a business idea on the document? They are not related even slightly to the company I am now hired by, but I do want to further research and possibly develop them in the next year or two. I took the job (and signed the contract) as it was, because I was nearly homeless for lack of employment and needed it asap. I was not in a great position to negotiate from for this and several other reasons. Now I feel trapped by it and hope it does not bite me if and when I decide to go off on my own. So, any intelligent discussion on this matter is welcome by more than just the original submitter!
Silence is a state of mime.
If you have kids, just teach them what they need to know to start the business idea themselves. Also works with a trusted friend or sibling. Give the idea to someone who's not as encumbered by a poorly-negotiated contract.
wife/son/sibling
That said, if you care at all about the morality of the matter you should avoid actually infringing on the technology of your employer.
We've had a lot of betrayal lately. Lots of people stabbing each other in the back. Just make sure your coding isn't taking proprietary technology or ideas from your parent company.
Whatever you think you're getting paid, if the customer wants that then you're probably more of a code smuggler then a coder. And you might be able to make a lot more money if you facilitated the transaction through your company rather then around it.
People that bring business into a company are prized above all others. I don't care how smart you are or how hard you work. The "rainmakers" are always top dog. If you can bring a big contract into your company then the company will love you. If you can do it repeatedly they'll give you your own private island and yacht.
Think big picture. Does the company have a product or service that is being undersold or that you know a new market to push it in? Try that. If you can make your company a lot of money then you might make a lot more money without having to work as hard.
Betrayal is a toxic behavior that destroys civilization and industry. We are most successful when we work together. We can accomplish things together that we cannot accomplish alone. Betrayal makes all of that impossible. And with a little trust and mutual cooperation we can make everyone far richer and pro productive then we would have ever been otherwise.
Now your company could betray you as well. If they're stupid then they might. Be careful about making it hard for them to back stab you if you actually have a good idea. But try to work through them if you can because the profits will be bigger if you can make the company itself wealthy in the process.
I've decided to stop wasting my time responding to AC trolls/sockpuppets... so if you want a response from me... login.
One thing I have learned is that while they have the right of first refusal, if they choose not to pursue the idea, I can ask to have it reassigned back to me and pursue on my own. That might be your only option, assuming what you're pursuing doesn't compete with your current employer.
"Software is the difference between hardware and reality"
and ask forgiveness later than to always ask permission and never get anything done. there are so many laws, that pretty much everything is illegal if you ask enough lawyers. If you have a truly great idea, just do it!
If the work you want to do at home is based heavily on what you do at work, I can see your employer having a problem with it. If it's totally independant, get a lawyer, cover your ass and do what you will. I'm sure that it is illegal to retain ownership of something you invent while not being paid, but that implies that you aren't directly benefitting from your paid time to invent something when you aren't on the clock. For example, if you learn to build a Web 2.0 style website at work, and build a monetized web 2.0 website while at home, there's a problem there. But if you're an accountant and you build a website in your spare time, I would find it hard to believe that your company could claim any sort of ownership.
Never say never. Ah!! I did it again!
renegotiate your contract or quit.
you should never have signed such an onerous agreement in the first place. I've never had any problems form employers when refusing to sign such contracts and always insist on them being rewritten so that anything done on my time on my equipment remains mine, and that any of my contributions to open source projects are licensed under the terms of that project.
(sometimes it takes the lawyers a few attempts to get it right - i've found that even if the boss is willing, lawyers have difficulty understanding that their client actually wants the contract to be fair)
on a related note, IMO if your employer wants to own everything you create on your own time then they should pay you for 24 hours/day, 7 days/week - prob. about 4 times your current pay (based on a working week of 40 hours).
Stop being so happy with them and start taking a hard look at how much they are taking advantage of you. They think they own every thought in your head. Even though what they are asserting in their contract is nearly impossible to enforce it is an indication that they really don't care about the individual employee.
The way to deal with this is to start looking for another job post-haste and to make absolutely certain that the new employer doesn't have a clause in their contract such as this. Don't raise a stink, just vote with your feet and make certain that when you do leave that people understand why.
This is the only proper way to deal with this kind of idiotic policy.
GC
From http://apps.leg.wa.gov/rcw/default.aspx?cite=49.44.140
RCW 49.44.140
Requiring assignment of employee's rights to inventions — Conditions.
(1) A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) directly to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this state and is to that extent void and unenforceable.
(2) An employer shall not require a provision made void and unenforceable by subsection (1) of this section as a condition of employment or continuing employment.
(3) If an employment agreement entered into after September 1, 1979, contains a provision requiring the employee to assign any of the employee's rights in any invention to the employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) directly to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work preformed [performed] by the employee for the employer.
It probably isn't. If it is, have the lawyer write up a set of modifications that would make the policy acceptable to you. Present it to your employer and if he won't agree to it, quit.
Warning: this article may contain humor, sarcasm, parody, and perhaps even irony. Read at your own risk.
Maybe your state has a similar law?
From http://apps.leg.wa.gov/rcw/default.aspx?cite=49.44.140
RCW 49.44.140
Requiring assignment of employee's rights to inventions — Conditions.
(1) A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) directly to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this state and is to that extent void and unenforceable.
(2) An employer shall not require a provision made void and unenforceable by subsection (1) of this section as a condition of employment or continuing employment.
(3) If an employment agreement entered into after September 1, 1979, contains a provision requiring the employee to assign any of the employee's rights in any invention to the employer, the employer must also, at the time the agreement is made, provide a written notification to the employee that the agreement does not apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) directly to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work preformed [performed] by the employee for the employer.
A employed can claim your IP no matter when you work on it, but..First of all you should not have signed that contract, a contract symbolizes both parties agree. You can however renegotiate it (try to find a different set of rules you agree on, namely that it does not mention 'all') if your idea falls outside the practical scope of you work activities. The law makes that distinction at least in Holland, we apply law to reason and fairness, not to the 'letter' as in some countries. If you work in a motor company as an accountant and you invent a new type of engine at home, that IP would not be a candidate for confiscation. If you are one of the engine designers, then yes, because the inspiration for you design may have come from your work environment or a result of your experience in it.
If you are smart you renegotiate the contract for other reasons, and try to get the explicit words out of it. Tell them it doesn't protect them optimally to make their own rules.
If you can't get out of the contract.
Just make a note of the time taken to create the project/idea.
Cost to you in parts and labour (if applicable)
And bill them for the above at overtime rates.
Well if they want the IP they gotta pay for it.
I previously worked for an employer with a similar policy. When I left I asked and received permission to 'own' some ideas I'd been working on on the side. They weren't actually interested in owning *everything* I worked on, only things that were relevant for their business. I think the broad employee agreement was more about not wanting to put any effort into crafting a good one, rather than about greedily taking everything.
If I were you I would just talk to the company and see what they say first. Make sure you ask for confirmation of anything in writing - people often don't get serious about answering a question until you ask them to sign off on it.
[obligatory disclaimer] :)
Of course IANAL, so if you're really serious, consult one
Unless it is directly associated with your work duties they don't own it.
This is especially true if you invent the next pocket fisherman and you work for
an IT company. Tell them to bugger off.
Oh no, not another "ask a lawyer" question.
Let me rephrase every legal "Ask Slashdot" story ever: "What have your lawyers (in a sampling of states) told you, and what should I expect on the way into the initial consultation?"
In the few places where such a policy applied, I had to run things by the legal team. In most cases, they just wanted to ensure I wasn't abusing insider info, or associating their brand with mine, and once their concerns were addressed, I was free and clear. There was one job where they threatened to sue me and appropriate my IP if I dared invent something cool, that had nothing to do with their line of business. So, I did it anyway and put it in my partner's name, and when the company started getting too nosy, I went on "stress leave" and found a better gig elsewhere. Well, okay, I really was stressed out and depressed from that shitty job, but I did it out of spite.
This isn't fucking China. Your employer does not own you. If you are truly concerned, seek (outside) legal counsel to find out if your employer's policy is enforceable, in many jurisdictions there are laws against this sort of thing. If you are a creative guy like me, you will want to be more mindful of these overreaching clauses in your future employment contracts.
-Billco, Fnarg.com
Do you pay your employees for 24 hours/day?
If the hourly rate is at least 5.8 times minimum wage: Yes. That covers 40 hours at the office plus time and a half for the other 128 hours of the week.
There's an enormous difference in a business sense between your pursuing a hobby, supporting a work related open source project, and running a side market the company has not yet taken on and using your work time, work resources, or consultation with other company engineers to enhance this project. I've seen far too many junior engineers and excited new managers do precisely this and try to steal everythiung they could in the process, ignoring the existing law and creating intense personnel problems as they tried to hire away their former colleagues, only to bankrupt them with yet another ill-conceived startup. We saw a _lot_ of that in the dotcom era.
Discuss the project first with your manager or the people who work directly with it. Especially with open source, it's usually easy to get a clause added to your IP agreement to allow you to support the project in your own time, or even to get permission to publish your patches. In fact, it can be _required_ if the software is GPL and you publish binaries to your clients or partners, and that's actually a powerful reason to use GPL licensed tools rather than Apache or BSD licensed tools. It protects the programmers from pursuing "ratholes" of customized forks without being able to merge back to the primary code line. I frequently review partner agreements and make sure that our legal department adds appropriate licensing contingencies for projects based on open source software so we can get any useful patches pushed upstream into the code base.
renegotiating is crafting a new contract
And continuing to employ someone after two weeks have passed since the offer of a new contract is acceptance of said new contract, if AC's comment is to be believed.
There may be different laws/policies that apply when employed vs contracting.
Suppose you could write an agreement for a nearly identical arrangement,
where you'd do what you do now, as a sub-contractor. Include (or paste-in)
all the bits of your contract (that are NOT inconsistent with) you doing your
off-time projects, while keeping the IP rights to it.
Add all the bits that define an agreement of Contractor & Consultant, rather
than employee. (Get a lawyer to draw it up, if the company won't. Maybe
there are standard forms for this? IANAL, myself.)
Of course, it takes 2 to Tango... so, this leaves your employer in the role of
"Deal Breaker" ie, if they want to risk losing your services, if you don't get
what you want.
Now, in fairness, it might be said that you're "only" able to get as least some
of these great product/project ideas -because- you're working in the context
you call "workplace"... and your employer could then be said to be contribu-
ting to -even- your after-hours projects.
If they don't want to give you 100% ownership of your work, maybe offer
up to 49%, so you both recognise their contribution, but -retain- controlling
interest in your creations, which they did -not- pay for.
Alternatively, let them pay you for any work they want to own 100%, or sign
-only- agreements that let you do what you wish with -your- AH creations,
but they get it "free" (as part of your normal earnings).
There are lots of solutions, but - if you can't -both- sign up to one of them
that you can live with - quit.
Maybe form or join a group of similarly aggrieved creative techies & offer
the benefit of your talents as a consulting company, and write your -own-
agreements.
Don't just sit there & feel you're being forced-into something that adverse-
ly affects your total lifetime earnings.
When -next- you're asked to sign a contract with untenable IP terms, like the
one you've referred to here, just cross out the offending line(s), & hand it
back, signed.
IF they fail to check the line(s) on IP, it's not really important to them... so,
no issue arises.
IF they call you on it, simply point out that you've made that change, so :-)
you may find that you have -no- IP case to answer...
I seem to remember from when I lived in Prague, anything that you develop stays yours. Even when developed on business time, the business cannot take ownership of it. That seemed to be very sensible to me at the time. Now, I may not remember it accurately, but I can always dream... :)
After all, they were paying me to engineer and implement systems, not write lyrics or short stories.
Unless they're looking for a liaison between the engineering and marketing departments. If you can write short stories, you can learn to write ad copy. If you can write lyrics, you can learn to write jingles.
Unless your company can prove that your side project derives from concepts or projects developed or being developed in said company, I would imagine that you have little to worry about.
It would be nigh impossible to prove that your ideas were developed during your employment in the company. Unless of course you tell them...
Mod parent up. Contract Law is contrary to what many people think it is, and I mean that in a good way. It tries to be very fair.
The general public think if it's written down in a contract, and you signed it, you're bound by it. That's wrong. Aside from the very relevant link the parent posted, if you walk away from a contract the other party is only entitled to actual economic damages. So long as your new product isn't competing with your old employer and you haven't taken any of their IP (it's a felony to steal IP), then they haven't lost any money and aren't entitled to a cent in damages.
If the agreement you signed with your company only references works for hire, then it is possible that it may not apply to you. Work for hire does not apply to copyrights in software code. If the agreement is ambiguous, then it still may not apply. Software code would need to be assigned to your employer, and that can only be done in writing signed by you.
Talk with a lawyer specializing in tech startups. Make sure you collect your employee's manual and any contracts your signed before working with the company. A lawyer specializing in tech startups should be able to walk you through this minefield.
It's about more than just copyright. It's also about non-compete agreements (valid in some states, invalid in others), non-disclosure agreements, and other employment agreements which might restrict what you can do if you leave the company. And let's not forget patents as well.
When I have clients in these situations I try to find ways to negotiate with their employer for a carve out for specific types of work, or I advise my clients to leave their current job. In the end, these are the only two options you have to ensure you protect your legal right to the work you create. Even then, however, you have to look at restrictive covenants—non-competes, non-disclosures, etc.
Search the web or ask around for a tech startup lawyer near you.
That is a great suggestion - play armchair lawyer. Then when the company sues you and claims that the code does fall under one of the parts,you find yourself on the receiving end of a lawsuit and have to hire a lawyer.
Discuss this with your employer ahead of time. If the employer does not give you an exception, either find a new job or expect to fight a lawsuit and but several thousand dollars aside for legal expenses.
I've been down this road a couple of times.
The reality is the agreement that you had to sign is unenforceable and most likely contrary to your local laws. That said ignore everyone who says to talk to legal or your boss, or anything like that. Some years ago I took a job at a large engineering company and explicitly asked about these types of IP policies, for the same reasons your are. The head of HR, to whom I asked the question, responded as I just said, those agreements are unenforceable so we don't use them. However, a couple of people that I worked with were doing a sideline project. One of them lost their nerve and asked the company about it. Even though they were entirely within their employment agreement and company policy, the company shut them down.
Here are a couple of things that you must do in order to stay in the clear.
1. Do not work on your project on company time or with company resources. That includes network access, software, company laptop at home etc. I don't even access personal email from a company computer.
2. Tell no one at work about your side projects. Unless that person would be employee number 2 if you hit it, no one at work should know anything.
3. Do not work on a product that competes with the company, enhances a company product, or is in a market that is foreseeable for the company to go into.
If you violate number 1 give the company a legal claim on your work. If you violate number 3 you give the company a potential claim on your work. Number 2, well that is just avoiding issues, firing, threats, etc.
If you are still worried about it then my advice is this. The IP agreement is between you and your employer. In my state it costs $150.00 to start a company. So start a company. Your company and you have an agreement on IP, you "work" for your company using your company's time and resources. As long as you follow a few simple rules for self employment your company's structure protects you from any liability and IP claim from your current employer.
If programming is your passion, like it is for me, than chances is that programming is you major hobby and most of your fulfilment comes from writing software either for your own education and for the common good. Your employer is saying that you have to ditch your hobby, since for example contributing to open source programs or writing shareware is a no go.
So that leaves you with these possibilities:
1) Some states have laws on the book that state that employers cannot get the rights for works created off the clock unless they're part of a project of the employer (or similar provisions). Check, and if you find one notify your legal department, because depending on your jurisdiction you may get in legal trouble if you continue like it is knowing full well that part of the contract (that the other party thinks holds) doesn't apply. Words like fraud come to mind.
2) Renegotiate the contract.
3) Look for a different job.
4) Deal with never programming for fun again. Take on painting, dancing, or whatever.
And explain that you're merely following what's in the policy. It may help to keep a vibrating fist on your desk.
Read about them.
Also re: slavery laws. I'm pretty sure they were repealed a few years ago even in the USA...
My only advice is to read everything you're given, and don't sign agreements that are not beneficial to you.
Abide by the contracts you have, and speak to an attorney to figure out how well it would stand up in court.
"No good deed goes unpunished"
Start billing them for all those hours. See how long that lasts before they decide to renegotiate.
It's the same whether you work in industry, government, or academia. In industry they just put it very clear in writing when you get the job. Anyway, unless you own a business on the side when they hire you and they accept they you keep it, there is no way you, alone, can beat their lawyers in a court room.
...like William Sealy Gosset did.
The OP's assessment of "Overly-Restrictive" seems rather naive. During my entire career, just about every job I held had such provisions about intellectual property rights. I would not call it "overly-restrictive" at all. And that said, I found it usually possible to get some "wiggle-room" by up-front telling them exceptions that I wanted to preserve my sole rights in. Renegotiate, though it is harder to do once you are onboard.
Do they pay you 24/7? Otherwise their piece of paper isn't enforceable.
Yup, I know where you're coming from, I worked for a (UK) bookshop company which included a similar clause along the lines of "any invention or program you come up with while an employee belongs to us if it is related to the business, whether or not you do it on company time."
Now this is a company I liked, I got on well with the bosses. I was developing a POS/stock control system for use at temporary bookshops, and if it ended up being as cool as I wanted it to be I wanted to open source the thing. So I went and had a chat. They did have a point when they pointed out that I'd be helping the competition if I did that, and I countered with the idea of then charging the competition for support and updates. The conversation went back and forth for a bit.
Then I asked if they would be happy to take responsibility for me writing a (hypothetical!) virus which attacked Amazon's systems.
The clause was changed rather quickly.
Please consider this account deleted, I just can't be bothered with the spam anymore.
I always stroked out those "all your code are belong to us" clauses and signed beside the cross-out before handing over employment contracts. When the person doing the hiring would question it, I'd explain that I had MSS Code Factory under development, show them the project, and make it clear that they did NOT own something I'd worked on since the late '80s to early '90s.
I never had a single employer complain about me doing that.
I do not fail; I succeed at finding out what does not work.
Companies often have over-restrictive policies made by lawyers and HR people who have very little involvement with the realities of company operations. They tend to be external hired guns or corporate climbers. They are more about looking good then actually suing you. Aside from your personal work, this might prohibit:
1) exchange of technology or knowledge with peers in your industry: thereby putting your company at a disadvantage
2) honoring open-source license terms
3) working with local universities or other institutions that require exchange of knowledge
These can be a problem in many businesses. For example, it is very common for best practices to be shared among businesses in different jurisdictions. Because the authors of these IP policies aren't really the star performers in your company they really don't care how much paperwork this causes you. They don't do much work themselves, so they don't care.
However, because these folks also tend to be too lazy and disconnected from real work to pursue you in a lawsuit so long as you keep a low profile. It is just too much effort.
Loopholes are only theoretical, even when vetted by an attorney or suggested by Slashdot readers ;).
Falsifying your projects to keep your employer from finding out is rarely worth the risk. Once the employer does find out, you're liable to find that you've left yourself open to charges of fraud. You won't even be able to claim the fraud was innocent as you were working under an alias or behind a "straw man" just to keep your employer from finding out. You could find yourself owing your employer money for damages and the state some time in the Graybar Motel.
Either renegotiate or find another job or ... Have confidence in yourself and go out on your own.
You could read Ask Slashdot - Handing Over Personal Work Without Compensation
I wonder if that might be a workable way forward. Companies are always changing their employment contracts anyway. Might make for a cleaner break, rather than attempting to change an existing contract. Quit and take a week or two of unpaid vacation, then hire back on, making sure to cross out all the objectionable requirements in the new contract. This is only if there is a mutual liking and respect, and this is seen as the most convenient way to address the IP concerns. And if there's not much to be lost on the years of service angle.
In any case, contracts can have quite a bit of bluff and bluster. They ask for things they should not ask for, and that cannot be enforced in court. If you never question or fight it, if you believe in it and meekly hand over everything, they could score a huge steal at your expense. You may be able to ignore those terms. Go ahead with your private projects, keeping them apart from the employer, and put the onus on them to sue. If they even notice the extracurricular work, they may very well realize that part of their contract is garbage and that they can't win a suit, and will have the sense not to try it. Even if they try it, win or lose they may alienate the best of their other workers. Could cost them more than a victory is worth.
Intellectual Property is a monopolistic, selfish, and defective concept. It is "tyranny over the mind of man"
That is what I did I took my pen and drew a line through that clause noting that I did not agree with it and initialed the spot. Then signed the contract.
I never signed an employment contract that I did not modify.
Do not look at laser with remaining good eye.
There, FIFY.
Rethinking email
I was working for MCI and they sold us to Cable and Wireless USA (no longer operating, that should tell you something). C&W put out an IP policy that gave them ownership of anything I created while working for them, even on my own time. It even went further giving them ownership of anything I had previously created. It was a land grab, and probably unenforceable, but I wouldn't sign it.
My boss kept pestering me to sign it, as it was now a condition of my employment. As a published author I had already sold the copyright to my written works.
So I did something I thought was slick. I red lined the document. Any section I didn't like I struck thru with a pen, then I initialed the sections. I carved up the multi page document and then signed it. I wrote at the bottom that failure for corporate legal to respond within 30 days constituted acceptance of my changes.
I made a copy and sent it off to corporate legal via inter office mail.
I never heard from legal for the rest of my employment with C&W.
I have done the same thing at every single employer that I have worked for in the 15 years since. I have never had a legal department reply. I have never had anyone harass me about not signing the form. As I understand it, from negotiating contracts for my writing, what I'm doing is legal.
Good luck, and please run anything you plan to do past an IP lawyer for a real answer.
I'm not a lawyer, blah, blah.
It's too late, unless you walk. They have a signed contract, and possibly it even says that by working there you continue to agree to any employee handbook changes they make.
What you need to do is give notice and quit. If you're really valuable to your employer, they'll agree to rip up the contract and renegotiate.
If you're not willing to quit, it must not be that important. If they won't renegotiate, you must not be that important to them.
Point is, you are in no position to negotiate.
I've negotiated these, prior to hire. But it is effectively the same gamble: I was willing to risk my employment with them and they had to see me as more valuable than anything I might invent on my own time.
As far back as common law (the unsung basis for the constitution of the United States of America)... any contract signed under 'duress' is null and void. I usually ask "what would happen if I didn't sign this..." and usually get back the answer "Just sing it.". This works as 'duress' for me. However there is precedent for folks who have reason to believe that they are under duress.
Some lines of reasoning go: "... but we already made and agreement (I would work, they would pay me) and then I was told to sign all these documents after I had moved here...". Works better if you sold house, even better if children are involved.
Know your rights, in the U.S.A. the law works for you, not the other way around (unless you're just 'stupid-guilty' and say 'stupid-guilty' things, because you don't know the law.
Also, check yer local 'bar' assoc. Plead that you a) have no money b) need advice c) believe you are in trouble... my experience(s) have (all) been good.
Good luck!
Simply develop with GPL code... The employer may own the code, but because GPL takes precedence it would FORCE your code to be GPL in the same way as if your employer had paid you to develop that code.
Just make sure your 'get rich' plan works with GPL code and that nothing is patentable.
Some places (and I've worked at one) had policies that could be read as them owning anything I did while employed, but could also be read as just applying to things in their area of interest (video test equipment, as it happened). I talked to my boss about it when I came on and he assured me that in fact it was only intended to read as applying to things that were related in some way to their business - stuff that was totally unrelated they didn't care about.
Now that was verbal, not written, but I suggest that you start by asking the question, and see what they say.
A thousand pounds of wood moving at 300 feet per minute. Don't get in the way.
I have my own very small company and business. it has nothing to do with what I do during my 'day job' other than its software based.
yet, even though the disciplines are very different, the bay area employers (my locale) think they have a right to ANY business you engage in while 'on fulltime salary'.
ie, if you sell houses on the weekend, they think they have a right to say no or get a cut. if you fix computers (somewhat typical of software guys) they can try to interfere or tell you to stop.
this ownership bullshit has got to stop! companies are WAY out of control in the power they have.
WE NEED UNIONS. I know they are an evil, but the evil we have now is likely worse than it would be had we be unionized.
software will never unionize, though. our grandparents would have a fit if they saw all the backward 'progress'; progress that they fought and suffered (literally) for, so that our lives would be better.
all I know is: my grandfather worked for over 35 years at the same place and had a retirement. he never worked overtime unless he was paid (handsomely for it). his life was arguably better than mine, being forced to work 60+ hours a week for BASE PAY.
we need unions. I just wish our selfish co-workers would band together and realize its for everyone's benefit. but we are too selfish to think of a community good. I really believe that and so I have no faith that our lot in life will improve.
--
"It is now safe to switch off your computer."
Sorry to hear that, but when your job starts controlling what you do with your spare time, its no longer a good fit.
So the market is good, I had 3 calls on Friday alone, so its time to start looking and find something that's a good fit.
And remember, during the interview process, you already have a job and you're also interviewing them.
If someone is passing you on the right, you are an asshole for driving in the wrong lane.
Work only on your on time, on your own computer (not networked in any way to the company's), do not use company software, compilers, debuggers nor any thing brought and paid for by the company. Wait 6~12 months after you leave the company to release or patent your work. Or have a trusted person who is qualified and outside the company apply for the patents or release the work.
"anything I do while under their employ is theirs, even when I'm off the clock" Marrried? I hope you haven't 'done' your wife, otherwise she's now your bosses wife. Had any children while working for them? Not your children any more (in which case they should be paying you child support or 24 x7 babysitting).
My father used to work at a major Silicon valley technology company as an engineer, and wanted to pursue a project the company wasn't interested in. He asked his manager if he could do so on his own time and with his own resources. He obtained a letter from the legal department acknowledging that the IP would belong to him, and eventually built a business around this project. He still has that letter in a safe deposit box.
You have two choices:
1. Talk to your employer and try to get an exemption written into your contract. If choice 1 fails, then you are left with:
2. Quit.
The most important you can do in an early venture is to validate your assumptions. What's the market fit? What's the minimum viable product? Who are the competitors? What can you learn from them? Who else is working on this that would partner/assist/guide you? All this stuff takes time and effort.
Conveniently, none of this creates IP.
May be fine if you have lots of experience and they have specifically saught you out...
Actually what I typically do when faced with legal documents with clauses I disagree with is cross out or change the terms. Amazingly nobody ever actually looks at what you signed - they just look for the signature, see it and then assume you agreed to everything in the boilerplate. Part of what I like about this tactic is that it turns the implicit assumption that we should just accept whatever conditions we are presented with back against the company making that assumption.
I don't know if this is legit, but when I was hired and saw that clause, I simply crossed it out before signing it. It seemed ridiculous to me that they would own an iPhone app I wrote on the weekend that had nothing to do with the company. HR was ok with me crossing it out.
Be careful. A zealous employer could ruin your life for you just having an idea while in their employ.
I ran into this same situation. I joined a company, moving my family 2000 miles in the process. This agreement was in the employment package. I removed it, round filed it and signed and returned the other stuff. 3 months after I joined the company HR slapped another one of these agreements on my desk and told me to sign it. I said no and round-filed it.
A few weeks later they came back and told me I had to sign it or else, that it was a condition of my employment. Again, I round filed it, refusing to sign it.
The next time it came up, my boss called ma aside and told me that HR was on his case, and that I had to sign it or he had to fire me. I told him that first of all the agreement was illegal. (What do I know, I am not a lawyer, but I took this position, and acted as if I knew what I was talking about) Second I had relocated my family at great expense (true) and that the required agreement had never been mentioned when I agreed to move (true). I said I had consulted with a lawyer who was eager to take my case if they fired me, and had guaranteed I would not only win, but probably own half the company. That was not strictly true, I was bluffing. I told my boss that I was not anxious for a confrontation over it but on the advice of my lawyer I should refuse to sign it, and if they fired me or in any way harassed me for refusing to sign it I could and would sue.
I took and maintained the position that the required agreement was illegal and I was, under advice of a lawyer, under no requirement to sign it.
I never heard any more on it. I worked there 12+ years and was promoted several times. Never did sign the agreement.
However, If you follow this path, I suggest you do be prepared to find another job, just in case. Your employer may not be as inept as mine.
Wanted to do some creative work that had no real overlap with what we were doing at the company. Had signed a similar agreement. Emailed my boss. He sent it up the food chain. Got an email back that said that given the scope of what I had proposed, they had no interest in the IP and I could retain the rights.
Now, I suppose if I were stepping on their toes - creating something which they could use or which would compete with them - they'd be upset and probably wouldn't have said "yes". But some employers are surprisingly reasonable. Some aren't going to budge. Find out which kind yours is before you do anything rash.
give an employee a written exemption for his non-job related invention, which he patented. Good employee, good employer, non-work related.
Have your wife create a corporation.
Or, do what musicians do under similar circumstances: work under an assumed name.
Ask yourself: would the corporation that put you in this box hesitate to stretch the truth for their own benefit? You are under no moral obligation not to do what you don't think is wrong.
You are welcome on my lawn.
There are a lot of things to consider-
for one, are you exempt? Would yoube using your own equipment? Would your software be related to your job? And what state do you live in? I would love to say more but I could get myself in trouble. I can say one thing though and that is that if they Sue you for working on a project after hours with your own equipment that doesn't implement methods developed during employment hours they would be very stupid as most past rulings have outlined very strongly that you must be "on the clock" and/or using company materials in order for them to claim IP on products by employees, so they would only raise employees tensions and waste money if they filed suit.... but it wouldn't hurt to ask first.
Just create something that violates a bunch patents or does Pr0n seach and be sure to credit their ownership ;-)
Start billing them overtime for weekends when you do hobby projects.
That should bring them into a negotiation mood.
A good example of why you should think twice before setting up agreements about the right to all works of an employee.
Just make sure that you as an employee really make that agreement stick.
Of course - you can create an application on your free time that requires a lot of support and credit it to the employer. Then end your employment.
If builders built buildings the way programmers wrote programs, then the first woodpecker would destroy civilization.
You needed to have changed the contract(s) before you signed them. When presented with such contracts in the past, I simply line out and initial parts I don't agree to, and amend if necessary (rarely, except when changing terms such as notice of termination). A contract is a negotiation, not just a single sided presentation on the part of the company. In 100% of the cases I've done this, the company simply signs the contract as amended by me. Only once has any company even commented on it (to clarify existing personal IP I was working on, which might impact the what I was to work on for them. That was with Google :)
If you quit and start up something that is in any way related to work you were doing, they might (and can) sue you, probably successfully. Even if they aren't successful, they will poison any relationship you have with current company ("hey, you never told us about this liability") which may get you fired from any current job, and make it very very difficult for you to be hired by anyone else (IP risk is something companies really try to avoid - the money is just too big)
Not a lawyer, but I've dealt with IP before (for many and major companies). You made a beginners mistake. I did too, right out of college - never again, though.
Write it off as experience, and get on with life. Lesson learned: never sign away your main asset like that again, in desperation to get a job. That's how the RIAA works with it's "artists". Or a pimp with a ho.
It's up to you, though. Trying to get around it will only make things worse. If you're in California, you at least have no "non-compete". It means you could shift employers, negotiate a better contract with the new ones (like you own IP done on your own time with your own assets), and likely get around that way. In any case, the "axe", if there was one, would fall on you, and not your new company.
If you live in a state where non-competes are binding, you are screwed.
When I get a contract with a clause like that, I say "this bit is just a minor problem, but needs fixing." If they balk, then the job is a bad fit anyway.
In your situation, you need to renegotiate that contractual provision. I can't think of a way that won't involve a credible threat to leave. "i'd like to stay, but this is not really workable."
Don't try to moonlight anonymously - success on a proprietary project will make you a great big target, and doing this on an open source project is laying legal minefields for whoever else tries to work on your project. You need to fix the actual problem.
http://rocknerd.co.uk
Wow! Grandma Susie sure is a fantastic C++ coder for a 81 year old. I used this reasoning when they tried to steal my asset management software I made (before I came to the company) after I deployed it in their environment.
>The problem is: my employer has an IP policy that states that anything I do while under their employ is theirs, even when I'm off the clock
Maybe I misunderstand but is that claim even legal?
For them to claim ownership of products of all your thoughts while you are working a normal dayjob for them?
What if you were to write a song in an evening, would they own that to?
Beeing an emplyee is beeing a person who sells work during, mostly anyway, eight hours a day to an employeer. Your employer is not your owner.
Bikers.....The only people that understand why a dog hangs his head out a car window.
(Then offer to return as a highly paid consultant to support it.)
Before I got my first pure IT job (back in 1984) I was developing sw for my father-in-law's company, I mentioned this during the interview and got an exception clause that would allow me to keep on supporting that software.
I have since then had a number of offers of new jobs/gone to multiple interviews: I have always mentioned the situation with my father-in-law and it has never been a problem.
At the same time (1982-1984) I had also developed some terminal emulation/file transfer software which was moderately successful, I sold a site license to my new employer which at the same time gave me the rights to go on maintaining it and selling it to other customers. During the next 4-5 years those external sales paid for our little mountain cabin near Rjukan, Telemark.
Terje
"almost all programming can be viewed as an exercise in caching"
I have had similar "invention" agreements from all my employers. Their language seems to infer that working for them is the incubation that will bring on new ideas, so even if you're off-the-clock, it is because you are working for them that you came up with the idea at all. However, in the agreements is a request for things that you have/are working on so they will be exempted. I usually include a several page list of things that I've thought about, generic enough to cover almost any field outside of my day to day work.
That said, if you come up with an idea not related to your tasks, they would be very hard pressed to make a case against you. If you come up with a better widget than the one you're doing their, they have a good case.
Joel Spolsky, co-founder of StackExchange had probably the best answer to this question that I had read anywhere. http://answers.onstartups.com/questions/19422/if-im-working-at-a-company-do-they-have-intellectual-property-rights-to-the-st/20136#20136
1) There is a 98% chance your creative work won't be worth anything to anyone else and your employer won't care, so just consider it a hobby and do it. (don't blab about it to coworkers or friends)
2) If it is mildly successful and someone wants to buy your IP (for a lot less money than you make from your salary), then just sell it and if your employer finds out then cut them in on the deal. Either they will value your services and keep you employed and appreciate a cut of the money or fire you because they don't like you anyway. (Your employer probably won't find out about it, so who cares)
3) If it is wildly successful then use the money to quit and hire a good lawyer if your old company decides to sue you.
or
4) If you are rich and don't need a job to make a living, then follow all the stupid advice about renegotiating your contract and honoring your employement contract. They won't negotiate unless you are a high level employee. And they especially won't renegotiate after the fact, since they will figure you already have some potentially valuable IP and the mere fact that you want to renegotiate is circumstantial evidence of that fact, so they have nothing to gain except your continued employment.
What's wrong with releasing your code under public domain anonymously (be sure to comb every file with a fine comb though before doing so)?
cpghost at Cordula's Web.
No.
If you signed a contract that says they can, it's probably not enforceable. Most likely, you did not sign such a contract.
You may have signed one, in your example, that says the house design is their property, because that's what you produce. Not houses. If so, it's up to you to prove that you are on the right side of the law, or that the contract is invalid somehow.
So what other industries do this? Anything that requires independent, creative thinking, the outcome of which could be patented or copyrighted, usually. Searching for "employer intellectual property ownership" gave a lot more info than I could possibly summarize.
Bottom line: it's complicated, and it depends on what you signed, who you work for, and where you live. This page is not a bad place to start.
http://www.intellectualpropertylawfirms.com/resources/intellectual-property/patents/employee-employer-patent-inventor.htm
Maybe in USA law is different, but in holland it is as simple as this:
Whatever a (contract / eula / agreement) sais, if it is an unlawful statement, it is void. No matter what they say, or claim you have signed.
Now, the reasons why companies to this is of course because of anti-competitive agreement. That is quite normal. The question is: do your side projects have anything to do with your companies business. If so, you'r pulling the short straw. If not so, then it doesn't mind what you signed, and only a judge could decide. (Mind you: dutch situation)
I also had an employer who claimed exactly this. They were also fond on accenting that point. I only learned later, that it's all a big lie, or at least, very doubtful.
Best thing to do is, shrug your shoulders. Use pseudonyms on the project you like to work on. Or never publish it at all. 'What doesn't know, doesn't harm'. Do your hobby projects as you used to. Do not publish under your own name if your company scares you.
Bringing up the point for discussion could be an option, but, at the same time, it could turn against you. Don't wake sleeping dogs.
There's law, contracts, moral and ethics. If you try to obey to the last 2, you should be fine.
*2 cents from anonymous*
First off, I think it varies from state to state how enforceable these contracts are. I believe in the company is headquartered in another state they claim you are under that states laws. I am not sure if that is accurate depending on what state you are in. However, if they sue you they will force you to pay a law and have him go to Texas to defend yourself.
Even if they are not legally enforceable, they are financially enforceable. First off they can fire you and second off they have alot more money to throw at you than you do to defend yourself. That is there biggest threat. Defending a lawsuit is very expensive.
The bottom line is NEVER tell your employer about side work. You never know if they will try to enforce some policy just because they know they can out spend you. Often times employees will fire you for doing any outside work. They want to own you. It is NOT worth the risk. I see some posts on here where some people can license material back to an employer. That is very few and very far between.
The bottom line is, odds are they won't find out. If you think your business will take off. Quit. If they find out later on, state you did the work they are claiming after leaving the company. You will need to contact a lawyer about this. Find a contracts attorney. You can get an initial review for a about $200-300. Odds are they will try to get you to pay them a whole bunch more money to do some legal mumbo jumbo. Odds are you don't need this. Just keep your mouth shut.
If you do start a business with it
-- dont use your name in the business
-- you can register your website through a 3rd party so when someone does a 'whois' on that site, your name won't come up
-- they can find out, but its not hard to make it so its difficult for them to find out.
The IP things are BS. I talked to a contract lawyer once and she told me stories about crazy employees who sue and then say 'ok' ill settle. Then change their minds. They drag these on for years just to cost you money. Some do it because they are jerks. Others do it, so they can scare other employees from doing the same thing. Employment agreements do NOT have to be legally enforceable to bankrupt you. It costs alot of money to defend yourself and employers know this.
And this gives the company any moral right to you work, done completely outside of company time and resources.....how, exactly?
https://www.revisor.leg.state.mn.us/bin/getpub.php?pubtype=STAT_CHAP_SEC&year=2006§ion=181.78
If you don't use their IP or resources, and don't develop in their line of business or anticipated business, the employer can't claim it.
...you shouldn't have signed documents agreeing to those practices at your current employer and found a different job.
Actually, corporations not claiming ownership of work they're not entitled to and have not paid for is the best policy. But corporations are driven by lawyers, so you know they'll go with what they can do, as opposed to what they should do. Shakespeare's character had it right.
And in the meantime, if one has to forgo honesty in order to not be robbed, that's just as acceptable here as it is when you tell a cutpurse that you have no money, even though it is in your sock.
Remember: something being "the law" does not in ANY way equate with it being RIGHT. At this point in time, it just means "government supported", which in turn is your assurance that it has been approved by a group of whom the vast majority are criminals by definition, having violated the constitution many times with malice aforethought.
I've fallen off your lawn, and I can't get up.
Also some states will make this clause null and void. You need to check with an IP lawyer in your state for any confirmation but the as long as you do not use any of your employers assets and your work is unrelated to the core business of the company most states will not allow your employer to claim your private work as theirs.
Sorry, no mod points for you today, but others please mod parent +1 Informative
I have dealt with this over the years in different ways. There are some U.S. states that pretty much explicitly pre-empt any assertion that what you do on your own time belongs to an employer. You might sign this away by contract, but enforceability is not consistent everywhere. I'm not a lawyer, but I've had to negotiate quite a few IP agreements.
This is more relevant at initial hiring, but even the large stodgy shops will usually have employees declare existing intellectual property in which you have patent filings, etc. If you have a project going on or are a submitter to an open source project, declare that up front.
Reasonable firms won't prevent you from working on things on your own time and with your own equipment (that's another key factor). I do realize that means there are quite a few unreasonable employers out there.
I don't recommend subterfuge, unless you've consulted with an attorney first. If your project is not directly related to your employer's business, be up front with them, and also be prepared to explain how the good will that is generated from your other activities helps or can help you with your job. For example, if you work on an open source project and get to "network" with competent, helpful people who know stuff about things that make your company go, be sure to point that out. Obviously, I'm not suggesting that you say you'll shop your hard technical problems to the Internet for free technical assistance, but every other profession has societies of people who occasionally provide ideas or insight for problem solving. This is the same thing.
There are many options; but you won't know which ones are really at your disposal until you talk with an appropriately practicing lawyer - that is, one that specializes in those kind of legal issues.
Otherwise, go find a new job.
Truth is like the sun. You can shut it out for a time, but it ain't goin' away. - Elvis Presley (source: imdb.com)
Say I did it, give me enough to make me rich, keep the rest and the tech. Easypeasy.
Because finding a new job is SOOOOOOOOOOOO easy in today's climate, right?
Two questions: Are you married? Are there restrictions on work outside of your current company? You might be able to create a shell corporation in your spouse's (or a trusted friend's) name. Then develop your invention and patent it under their name (not yours so your company has no claim) and assign the rights to the shell corp (of which you just coincidentally happen to be a silent 50% partner). Although a word of caution, as others have stated, if this is in the realm of what you do for the company that currently employs you they will have dibs unless you quit since you signed the Feudal Contract.
Lie.
scenarios such as the op's wouldn't exist. j/s.........
Oh hell yes You're employer's "agreement isn't worth the paper it,s written on. Full stop.
I was tended an offer by SAIC. I actually bothered to read the employee agreement. It stated that anything I ever thought of forever after had to be submitted to them to see if they considered it to be related to anything they were thinking about going into. This meant that for the rest of my life I would submit all of anything to them. It also said that prior to working for them I agreed I had zero rights to any IP never having created anything apparently.
I declined the honor and later approached an IP attorney. Long story short they can write anything they want in a contract an you can even agree to it and sign it but none of that makes it enforceable. Your employer's contract is not enforceable almost certainly. It's an intimidation tactic. The courts see these things, rightly, as q restraint against your ability to ply your trade and toss them most violently out of court. The lawyers who write these things are completely aware of this fact.
California State law ensures what you invent on your own time with your own equipment is yours. I'm not sure about other states, but check yours.
It's worse that just not living in the right country - in the US, it can be about not living in the right state.
Some states have a more pro-citizen, democratic leaning that is designed to keep people employed while others have a more pro-employer leaning that is designed to make working a privilege, (though they will call you lazy scum if you don't work).
It **used** to be the case that rules like what you mention would be accepted in california, but that changed under decades of democratic reforms where employees won their freedom - it was decided that employees were NOT owned property or 'slaves', and that what you did in your off hours, as long as it wasn't directly tied to what you did at work (and that can be a point of dispute). Now such agreements are no longer legal and even if employees sign such rules, **in California**, they are invalid and unenforceable (unless the law has changed again when Schwarzenegger and the GOP was running CA into the ground along with Bush...)...
The idea is that they don't own you outside of work -- on your own equipment. But it was heavily fought in court, so if your state hasn't already established precedent, it could be messy...
When I first started work in CA decades ago, my employer regularly took 'work' from employee's off hours (now days it is considered 'theft') -- i.e. unless they pay you 24/7 (better be getting some good over time!), those other hours are yours. But they tried to rip me off as well, -- had developed SW before I came there -- and though I worked on it at home while I was there, it was listed in my 'pre-owned' inventions, so when they tried to take it as a free demo, and were told they'd have to at least give me a bonus or anything on the side -- (I wasn't greedy... a 500-1000 bonus at the time would have bought me off), but for them it was the principle, == if they paid me, then they'd have to start paying everyone for off hours work (even though in my case it was only because it was listed under my starting agreement)... The people who wanted to use it had no problem with paying me (they were in marketing)... but my direct management nixed it -- but got flack for it -- and that only added to my popularity with management there....*sigh*...
I'd check the legality of such a clause in a contract (ie the employer getting your ideas/projects etc when on your own time). First, there is such a thing as 'Unfair Contract', where you can sue. Second, any clause which is invalid doesn't mean squat in a contract, so you might not run the risk of then owning anything you do on your own time. Check with a lawyer.
I remember when I first started in IT (as a Database Admin/Programmer etc) there wa a clause in my contract whcih said, 'And anything else we ask you to do.' One day they asked me to strip a palet of marketing material and load it into tyhe back of a pickup truck, drive it to another location and load it onto another palet. When I protested they pointed to that clause in my contract. I later found out (when I did a marketing certificate at a college) that the clause is actually illegal. No employer can ask you to do something outside of the scope they employed you for. So, if it was something IT related, then they could have aske dme to do it, but striping palets and loading trucks is far from IT related and as such they couldn't legally tell me to do it regardless of the clause in the contract.
So, my advice is, seek legal advice from an IP lawyer and find out if the clause is actually illegal, because technically, if the employer isn't paying you for the work, then what you do is your own business and not theirs. Of course, if it is legal, then it might be that you are expected to present the idea to the company for a 'yay' or 'nay', at which point if they say 'yay' you should receive creidt for it (and put that in for a pay rise at your next evaluation), or if 'nay', I'd get them to put in writing that they 'nayed' the idea and that you are free to work on it in your own time as your own project. Basically, cover yourself legally in case they try to turn around later and use that clause against you if the idea is successful, because you will have it in writing that they 'nayed' it and gave you a green light to pursue it without them having any claim to it.
So don't tell me: you want to develop open source stuff on the side and have your company subsidise that effort? Just ease along with the something-for-nothing philosophy that permeates the OSS movement?
Either: be honest with your management and say that's waht you want to do - you may not think that it is their time but if you are employed full time, then the moments of inspiration in the shower and on the way to the office DO belong to them.
Or: get another contract or another job.
quit and get another job. those kinds of IP policies are put in place by people who are inherently greedy? when you signed your employment contract / nda, did you really intend to sell your soul? if the answer is no, it's time to move on. learn how to garden too, so you needn't worry as much about where your next meal might come from.
I have been under many such contracts and find the wording very broad spectrum with many loops holes and here is how I weigh these type of situations.
Is my "moonlighting" in the same line of products or services that would benefit the company or be in direct competition with the company I work for? If the answer is yes then there are two options quit the job and wait the amount of time in the initial contract when hiring which in most cases is a year before you can produce anything that would be in competition with the company so you better have a job at McDonalds for a year or another company without an IP in effect when hiring so you can produce your invention at the end of the year. Some companies will go to the extent to make sure you did not think of it while working with them or come up with the idea by something you discovered while working there, times are tough people and nobody will think about bending you over. OR keep your job and wait till you are laid off or retired to work on your side project and hope nobody else comes up with the same idea out of necessity as that is how most inventions are born in the first place.
Now if the "moonlighting" has absolutely nothing to do with the company you work with in any form or fashion and couldn't contribute anything to that company in any way unless they started a new product line which 99.99% of the time that will not happen. In a case like that grab a sudo name and forge a head in a professional manner and hope the company you work for is a reputable company and will support your "moonlighting" (if they find out about it) and want to keep you as you may be more of an asset to them with your innovative thinking. Of course there is a certain amount of BS and the ability to pour it on as this will be effective... when in doubt LIE!
Outside of those two options there really isn't much else you can do... there is ALWAYS a loop hole all you have to do is find it first!
STFU... GTFO... & RTFM
Are they demanding your first born child too? I'd refuse to work for such a draconian company.
I've had a number of employers in recent years whose IP policies said they own everything, and when I was negotiating my employment I brought this up and we agreed that I would get an exception, in writing. Key to this was my specifying what the projects would be, and that these projects are not related to the company's business. (Not that they would not necessarily be useful to the company, but that they don't compete with the company in any way. And yes, that was explained in the written agreement.)
Some employers can be nice about it if you're nice about it and they're not actually losing anything. So if I were in your shoes, I would approach the boss, explain what I wanted to do, explain that I have not started, explain how it doesn't compete with the company, ask nicely for a written exception from the IP policy for your specific project(s) that you name and define in advance, and ask if we could please get HR to place this exemption in my file. The worst that happens is the boss says no.
That said, some employers can be real assholes about it, and those are the ones you should leave for greener pastures.
protect yourself and your partners by hiring a tech startup lawyer
I am a lawyer, and this is an area in which I practice
nuff said