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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?"
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.
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.
At least in academia most places let you separate your work on the side. If you want to use your work on the side as part of your research work well that's where you get into your situation. When they ask "what are you doing on our time" you have to say something.
When it comes to the question at hand, one option is to pitch the ideas to your employer. The other is to get a separate job, or ask to renegotiate that portion of your contract or move into a job within the company with a less restrictive contract. Expect that to come with a significant paycut though.
You actually run the risk, even asking the question, of implying you have an idea for a product on your current companies time, that you may be thinking about (even if not implementing), so if you leave they may claim that work was done on this project on their time, and you're in violation of their agreement, and they have ownership of some of your work. The question posed could be phrased as 'i have this great idea for a product, how do I get out of having to give my employer any money for it'.
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.
This may or may not help with the current situation, but with regards to choice 2, (especially during the hiring process) mention that you do some community work on the side for non-profits, and that the entities you deal with want to make sure there are no legal issues with anything you contribute to them. Sell it as you helping your church with their web site (even if you don't have a church...), or helping with backend systems for running a homeless shelter, etc. That opens the door to them letting you adjust that part of your contract -- after all, which employer would want to be seen as squashing their employee's ability to do charity work / help the community?
Then, take the contract to your lawyer, tell him what you want to have covered, and he will be able to re-word that section of the contract as an amendment for you to have your employer sign. This may work better at hire time than once you've been at a place for a while though. But worth a try.
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.
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Consulting with the employer's legal department is likely to be unproductive. Their client is the corporation, and they are not under any obligation and are likely prohibited by their State bar's code of professional conduct from telling you what is and is not enforceable in an employment contract. Do not contact the employer's legal department absent your own legal representation and do not attempt to negotiate with the employer's legal department absent your own legal representation. You should also consult with a lawyer on what, if any, retaliation the employer may legally perform in response to any attempts to modify or nullify the employer-employee IP contract.
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*all* contracts start in the favour of the people who wrote them.
you failed contract law
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.
In my admittedly limited experience, the subterfuge you recommend is not necessary. Just be honest about the situation. If your side projects are in an area that overlaps with your employer's business, then they have a legitimate right to refuse. If there's no overlap, then there's no legitimate reason for them to not make an accommodation.
I had a side business doing software for material handling. When a prospective employer showed me their IP/non-compete agreement we had a discussion about the situation. They had the lawyers modify the agreement to accommodate what I was doing. The result was we both understood each other's position and knew ahead of time exactly where the lines were drawn. In the end it turned out there was some conceptual overlap between the two endeavors, but this turned out to be to my employer's benefit as things I'd learned in my side business were directly applicable to my primary job. There was no conflict with customers because we were addressing completely different industries.
Dishonesty is not a good foundation for any kind of new relationship, but especially not for one with an employer.
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.
For professors, post-docs, and most assistant positions, the standard university contract in the US tends to say that you own the copyright of everything you do and the university owns the patents. This is likely not the case if you're working as an in-house programmer or copywriter or other similar positions, but for academics, they usually own their own copyright.
I'm in canada, and different universities have different rules, some of which even apply to undergraduates. My guess is that harvard doesn't own a large chunk of facebook just because it was developed in their dorm, but YMMV.
I wasn't trying to do an exhaustive breakdown of IP rights in academia. That would be well outside my very narrow experience of universities in ontario (canada) and east of ontario, and I believe at some places you can negotiate this as part of your contract. The only time I was on a hiring committee no one asked, and I was student rep anyway, so if they did it might have been when I wasn't in the room.