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?"

Comments

Two mostly similar choices

[Anonymous Coward]

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.

Re:Two mostly similar choices

[mrvan]

What I did at my current (academic) job is to keep copyright with my employer, but have them license it back to me under GPL. This means that if I move jobs or start my own business I can keep working on these projects. You can sell it to them as showing how they (ie, you) contribute to the community etc, and that they keep all IP so there is no danger of you suing them and they can always relicense.

Downside is of course that your future business model would have to build around an OSS core, but there are various options (OSS backend with proprietary frontend, web business / software as a service (no distribution = no requirement to give source code), proprietary modules that actually make it work (but make sure that the proprietary part cannot be construed as a derived work), etc etc.

Re:Two mostly similar choices

[Sir_Sri]

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'.

Re:Two mostly similar choices

[tchuladdiass]

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.

Re:Two mostly similar choices

[ray-auch]

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.

I wouldn't trust that to be the case everywhere - my recollection is of research grants / studentships coming with "everything you do while you get this grant belongs to...". Plus you had to co-operate in patenting it if they wanted and sign over the patents. etc.

That was a lot of years ago though - maybe it's all more enlightened, less money focused and less bureaucratic in academia these days...

Re:Two mostly similar choices

[LehiNephi]

I found myself in exactly the same position about a year ago. Here's the thought process I went through:

1) If it's a marketable idea, one that could make bucketloads of money, the employer is going to pursue it. They'll even want you to spend work hours on it. Or they'll apply other company resources ($$$) to it.
2) If it's something you think is super cool, but isn't marketable, the employer isn't going to care about whether you do it on your own free time.
3) If it's an idea you think is awesome, your employer doesn't agree, and you turn out to be right (it becomes successful), this is the only place where there's a rub. One option (if it's some sort of internet site) is to run it through a proxy (person)--get a friend/neighbor to set up the service but give you all the necessary access to develop/administer it. Another is to fully develop the idea, but hold off on implementing until you're out of the employ of your current employer. A third option is to talk to legal and/or your boss and see if you can carve out an exemption from your contract for work not related to your employer's business.

For my current employer (who has a policy quite similar to yours), they were very open about the reason for such a policy. Simply put, they're hiring you for your mind, and if you've got a great idea, like it or not you'll be thinking about it during work hours. If you feel your current employer isn't compensating you sufficiently for all of the products of your mind, then you probably need to either A) talk to your employer about it, B) find a new job, or C) reassess how valuable your work really is. No offense is intended, but since you haven't mentioned how well you're paid, or even what industry you're working in, I have to leave it as a possibility.

Re:Two mostly similar choices

[MSTCrow5429]

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.

Re:Two mostly similar choices

[Anonymous Coward]

Simply put, they're hiring you for your mind

No, my employer is hiring me to do work. If they can't tell me ahead of time what work they want done, they have no claim on it.

and if you've got a great idea, like it or not you'll be thinking about it during work hours.

I think about a lot of things during work hours. As long as I'm not wasting work time just thinking about stuff, they have no reason to complain and no right to dictate what I can or can't think about.

Re:Two mostly similar choices

[patchmaster]

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.

Re:Two mostly similar choices

[Anonymous Coward]

Simply put, they're hiring you for your mind

No they're not. They're hiring me to work. If they're hiring you for your mind, you'd better be getting paid for a full 168 hour week. Personally, I'm pretty sure my employer doesn't pay me for "thinking time" while I'm sat on the shitter at home.

Re:Two mostly similar choices

[graphius]

You actually run the risk, even asking the question, of implying you have an idea for a product on your current companies time...

This is one of the reasons I don't think corporations should be able to hold copyright or patents. While the company may have helped fund creation of an idea/project, it was a person, or at most a group of people that actually came up with the idea. I do think that the company should be able to stipulate generous licensing terms, or even be exempt from paying royalties (they already pay the inventor a salary after all), but ownership resides in the inventor. This also gives the corporation incentive to treat their employees well, so they will stay and continue to license the ideas to said corp.

Of course the downside is that things can become a bit more complicated when a group of people invent something, but any lawyer worth their salt should be able to figure out a succession plan. In fact that is all the corporate ownership really is, a complicated, one sided succession plan....

Re:Two mostly similar choices

[TheGavster]

The feeling among engineers at my current place of employment is very similar (that the job is basically McDonald's but with much better pay and no customer interaction). While it is certainly something that an employer can encourage through policy (having salaried workers still punch an hourly clock, lack of input into future work ...), I think that this attitude represents a lot of what's wrong with the modern intellectual workforce.

McDonald's pays people by the hour because there is a clear distinction between work and not-work, and they pay you to be in work mode for x hours. Work/life separation is more difficult with engineering work (eg, a short-order cook cannot work from the toilet, but an engineer may have a leap of insight there). I think that an effort is required from both sides to make the most of a worker's mind.

The first step is likely best taken from the employers' side; at all of the firms I know engineers at, they punch an hourly clock and are charged vacation time when they don't make 40 hours in week. A true salaried worker should be paid a fixed sum per week, staying late when a task is down to the wire, but at the same time leaving early (or for part of the day) when waiting on data or between projects. The hourly mindset leads to people sitting around waiting for an arbitrary time to arrive, or checking out before the job is done.

Re:Two mostly similar choices

[graphius]

I think about a lot of things during work hours.

This....
If I am thinking of having a beer after work how does that affect my employer.
Or a more specific example:
I am at work, say on a Friday afternoon, thinking of going out on the weekend to take some photographs (I enjoy taking landscape photos as a relaxing exercise). If I happen to make a great image that I sell to someone, does my weekday employer have any right to the image?

Re:Two mostly similar choices

[gbjbaanb]

no, your employer is paying you to work for them. You are their bitch, you should know this as you agreed to it when you signed the contract that exchanged your time for their money. If you had any sense you'd have read it and had the bit that says "all work done during this employment" changed to "all work done during contracted hours" (or similar)

If you don't like it, you have 2 choices: ask them to alter the contract terms (as both parties signed) or cancel the contract (by quitting).

You can try to avoid keeping to the agreed terms, but I think you'd be a little bit pissed if they arbitrarily decided to do the same (by, say, paying you less).

Re:Two mostly similar choices

[KeithIrwin]

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.

Re:Two mostly similar choices

[Sir_Sri]

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.

Re:Two mostly similar choices

[Barbara, not Barbie]

The policy is illegal, the same as so many of those non-competes that they copy off the web "because everyone uses them, so they must be enforceable". If you're off the clock, you're off the clock.

And before all the ID-10-Ts start whinging about "non-exempt" - forget it - there is NOTHING an ermployer can do except fire you, and they only time they'll do that is if your idea is really really good and they're trying to get you to fork it over, in which case, aren't you in the drivers seat at that point? They cannot claim your off-the-clock work, since you were neither hired to do it, nor paid to do it. Copyright doesn't work that way, stop being morons already.

Re:Two mostly similar choices

[HangingChad]

The obvious is of course to get a new job.

That doesn't always work anyway. Depending on how your IP agreement is crafted, some employers try to lay claim to anything you do up to two years in the future.

The obvious solution is not to sign a restrictive IP agreement in the first place, or negotiate language changes up front that make it clear what you develop on your own time is your property. I did that, more than once, and turned down jobs when they wouldn't budge.

Re:Two mostly similar choices

[niktemadur]

If your side projects are in an area that overlaps with your employer's business, then they have a legitimate right to refuse.

You bring up a very valid point. On first impression, overly restrictive intellectual property smacks of intellectual slavery, but then there's always the risk of an employer's ideas, know-how and internal processes being used against them by ambitious yet unimaginative and unscrupulous employees.

It's a classic scenario, isn't it? The manager of a X business quits and opens a copycat store, sometimes even right across the street, and a working relationship has turned into a rivalry, with the new business having privileged information about how his former employer does what he/she does.
Then, the new business could sell tacos, sandwiches, salads, pitas, gyros, ANYTHING, but inevitably it's also gotta be burgers, right? WHY does it have to be the exact same fucking thing?

True story: An office/school supply store was doing pretty good business, until some misguided imbecile tried to duplicate lightning in a bottle and opened another supply store next door. Now there's two businesses sharing the same number of customers in the same block, both struggling to make ends meet now, a toil and chore just to stay afloat.

Another one: For ages, there were no Spanish cuisine restaurants in my town. One finally opens up, and it's a resounding success. Within a year, there were five Spanish restaurants. Within another year, all had closed down, not enough customers to go around. Meanwhile, during all that time, no Thai or Vietnamese, no Peruvian or Brazilian, no Greek or Turkish, not even a place to get a decent baked potato with toppings. BRILLIANT!!!

Re:Two mostly similar choices

[mysidia]

Downside is of course that your future business model would have to build around an OSS core

Then don't use the GPL for this. There are plenty of free software licenses this could be licensed under that would enable you to sublicense.

For example: You could have them retain copyright, but grant you an irrevokable write to modify, redistribute, sublicense, and produce derivative works.

Or use the BSD license / Academic Software License / Mozilla Public License.

Re:Two mostly similar choices

[Anonymous Coward]

I am in my 50s, and when I was in my 20s things were different. Back then it was customary that one's inventions were one's own unless they were created during the work day as part of one's job.

What has changed is that corporate lawyers have instituted employee agreements that are much more severe - absurdly so.

One should not be willing to sign an agreement that gives an employer rights to anything you think of during the term of your employment. Your job is not your whole life. Employment is not indentured servitude.

I myself never sign such an agreement. It often becomes a difficult issue, but I just don't sign, and I have never been fired because of it. One thing I have often done is modify the agreement, crossing out the phrase "in the course of" and replacing it with "pursuant to" where they specify that they own IP that is created "in the course of" my work. These two phrases mean very different things.

Nowadays, I usually do my work as 1099 for this reason, since expectations with respect to IP are different. Employers think that they "own" anyone who is a W-2.

Re:Two mostly similar choices

[davidbofinger]

a short-order cook cannot work from the toilet

Thank you so much for that image. You have aided my weight-loss program at the expense of my peace of mind.

Re:Two mostly similar choices

[epyT-R]

no, he is not not their bitch. he is their employee. there is supposed to be a difference, though in today's world things like individual liberty and life balance are dying out in favor of unhealthy social dynamics. I think the bigger point is that employers should not have the right to expect or have such control.. it blurs the line between employee and slave. agreeing to stuff in a contract under duress (which this is since the choice is work or don't eat) is morally questionable at least, and probably against the law.

Re:Two mostly similar choices

[Solandri]

at all of the firms I know engineers at, they punch an hourly clock and are charged vacation time when they don't make 40 hours in week. A true salaried worker should be paid a fixed sum per week, staying late when a task is down to the wire, but at the same time leaving early (or for part of the day) when waiting on data or between projects.

If the company has government contracts, they're required to track how many hours each engineer on the project works, even if they're salaried. e.g. When a company wins a DoD contract for $X, they're not given the money as a lump sum. $Y is allocated to labor, and the government cuts the check based on how many worker-hours the company documents. So at least that part of it you can blame on the government bean-counters. Personally I think setting milestones with payments only at those milestones encourages more productivity. But that's not what the government wants, and whatever the government wants it gets.

Re:Two mostly similar choices

[evenmoreconfused]

So does that mean that I, as an employer, am unable to hire / employ someone to invent a something new for me? If not, how would I do so?

Re:Two mostly similar choices

[ArsonSmith]

you and at most a few others would have to get together and form a legal entity that could then hold that copywright. We could call it a grouporation or a cooperative relationship or something. You'll probably want to make sure you have someone to manage the inventors and some people to help find other talented inventors so you may want to make a people resources department. You'll need to take in some money to get everything started and you'll want some people that can manage it for you so you'll want to hire some money counting people. You'll want to sell your invention so maybe you could have a whole depart^H^H^H^H^Hsection of product price negotiator people. You'll probably want more people to help manage some of these things too. Just as long as it's not a corporation that holds these patents and copywrites.

Re:Two mostly similar choices

[ArsonSmith]

What other industries have stipulations like this. If I'm a home modeller and I remodel my own house can my employer claim that my house is now theirs?

Re:Two mostly similar choices

[graphius]

Realistically, you cannot hire anyone to "invent something new".Sure, you can fund research, or provide an environment encouraging free thought, and with luck something may be invented or discovered. Part of your reward for providing these resources could be a generous (or free) license of the technology. It is still invented by the person you hire.
To me it seems much more counterintuitive, and unreasonable for a corporation to claim ownership of an idea. Maybe I have worked as a consultant too much, but I still see ideas as the exclusive property of people. Of course it does get complicated to divide up a patent or copyright between a group of co-inventors, but I still think in the long run it would be less convoluted than the mess we have now.

Re:Two mostly similar choices

[sconeu]

Not just profs, etc...

My daughter works in the dining hall at UCSB, and she got a "Patent Amendment" that she had to sign.

Re:Two mostly similar choices

[gd2shoe]

... Even if you apply a process you have learnt in the workplace to the development of your idea after hours (e.g. using some good coding tips you picked up at work, or engaging in independant peer review in a way similar to how it's done at work), then you have actually polluted your product with your company's IP, and your emplaoyer is quite within their rights to claim at least part-ownership of that product.

Not one bit. That doesn't mean that you won't have to fight it in court, but employees are expected to learn and grow on the job. Former employees are expected to have learned. New hires are expected to have learned from former employers.

If you use a specific patent, copyright or other documented intellectual property or contractual trade secret, then you're in trouble. If they can't make a legal claim on something against an arbitrary rival, then they can't make the claim against a former employee.

Re:Two mostly similar choices

[SirSlud]

1) If it's a marketable idea, one that could make bucketloads of money, the employer is going to pursue it.

They may not. (IE, I think your third point is a lot more common than the 1st.) I had a friend who kept trying to get his project made and kept getting shutting down. So he left, and now he on the cusp of making boatloads of money. Companies are risk adverse, and of great ideas are pooh poohed until you're the one that proves that it's commercially viable.

I'd always recommend what I do, at least within the field of programming - if they don't plan on financially backing you on projects you do outside of work time, than they concede the the ownership of those ideas/work. Most employers that I've run into say as much in their contracts, and if they don't, every single last one of them has amended the contract to say as much. What I do at work is theirs - what they don't let me work on at work is not. They have not hired my mind, they have hired by ability to do the work they expect me to do during work hours (and compensated overtime) at the salary we agreed upon in the contract.

I'd be wary of any position in which shit I do outside of work could contractually end up in their hands, but thus far, after 12 years of this, nobody has batted an eye when I've requested such a reasonable change before I sign an employment contract. (From their perspective, it's obvious why they'd try and start with blanket ownership, and also obvious why not being able to bend on such matters would make recruiting prohibitively difficult.)

Re:Two mostly similar choices

[Kjella]

And before all the ID-10-Ts start whinging about "non-exempt" - forget it - there is NOTHING an ermployer can do except fire you,

And sue you and get injunctions to prevent you making money from it. So now you're out of work, paying lawyer fees burning through the nest egg you were supposed to start a business with.

They cannot claim your off-the-clock work, since you were neither hired to do it, nor paid to do it.

They will find some bullshit way to say your work is tainted by some IP you've used or seen at your job, and you will be forced to defend against that. The cost of proving that you work is clean and only using general methods and skills is enough that even if you win, you lose.

Re:Two mostly similar choices

[shiftless]

And, in the case of the restaurants, sure bet that the 4 latecomers were opened by former cooks, waiters, hosts from the first, who stole the clientele list or the recipe book.

And the first restaurant--if they are indeed competent to remain in business--doesn't give a flying damn about someone stealing its restaurant book or clientele list, because these represent only a fraction of that business's value. The value of restaurants comes not from its food (which is a commodity), but because of the atmosphere and service.

Re:Two mostly similar choices

[6Yankee]

a short-order cook cannot work from the toilet

...but when I was in McJail, I had a shift manager who would disappear into the toilets whenever a bus showed up. Even grabbed a quarter-pounder to eat while he was sitting there, with his trousers round his ankles, listening to the rest of us running around like headless chickens.

He was most unimpressed when we discovered that we could get to the cistern from the cleaning cupboard and flush the bog under him :D

Re:Two mostly similar choices

[hexagonc]

This is absolutely the case and doesn't get enough attention in these days of "IP" run amok. People talk about a company's "IP" as if it encompasses anything that is produced from the mind; it is not. In the US, there are only three types of "IP" that are protected by Federal law: copyrights, trademarks and patents. From a software perspective, you can think of these as sourcecode, logos (that have to be registered with the government), and technical design documents.

On the state level, things get a little more nebulous with the concept of a "trade secret". Now, trade secrets are much more broad than the federally enforced IP. A trade secret really can be almost any technique or process that is developed or learned by an employee on the company's dime. However, there are limits to what a company can claim as a trade secret since it is in the public interest for employees to be able to learn on the job and apply that experience to future jobs. IANAL, but I had to do research on this because I was in a similar predicament to the submitter. In general, a company can only claim a "trade secret" for information that is not generally known and from which it can derive some business benefit. It also has to be actively taking steps to protect the dissemination of such knowledge, e.g., nondisclosure agreements, access controls, etc. Again, this varies to some extent by state so one really might need to talk to a lawyer with respect to trade secrets. As a point of reference, there are important differences between the trade secret laws in California and Massachusetts.

Re:Two mostly similar choices

[v1]

no, your employer is paying you to work for them. You are their bitch, you should know this as you agreed to it when you signed the contract that exchanged your time for their money. If you had any sense you'd have read it and had the bit that says "all work done during this employment" changed to "all work done during contracted hours" (or similar)

In most cases people are hired to perform specific tasks. They are not expected to perform tasks far outside the bounds of those things. If you're hired to be a programmer for an auto company, they expect you to write code for their cars or their business. If you come up with a good idea on how to manage antilock brakes, whether or not while on the clock, that idea is theirs. If you come up with an optimization on a mailserver while you're off the clock while you're at home, they might have claim to that, if part of your job involves maintenance of the servers while at work. If you think of a really good new recipe for your favorite lasagna one weekend, come on now... do you really expect that to be company property? (but see, if you blew an hour of their time during your day job thinking about it, instead of while off the clock, you've cheated them out of some of the time they pay you for)

You can't just simply say "anything you think of, on or off the clock, is mine". It will need to have some relevance to the job you were hired to do to hold water.

When you are hired by a company, they do not own your life. They own your services and the fruits of your services created during a fixed period of time during the week. They may also have claim to IP created off the clock that is directly related to the work you perform while on the clock, because you are benefitting from the time they paid you for while at work, where they were paying you to think about those things.

Simply because you "might have been thinking about that while you were at work yesterday" doesn't mean they own the idea. If you're being productive and focused at work you won't likely have much time to think about anything off task anyway. If you do waste company time thinking about unrelated things you are working on independently at home, (like spending an hour on the web researching different new spice ideas for your lasagna you're going to be making for dinner on Sunday) then you either have to look at it as the employer having a stake in your "project" at home, OR that you are cheating the company by misuse of on-the-clock time. Since the former is such a grey area and difficult to quantify, the latter is the one that should be enforced. In other words, if you're frequently daydreaming at work on design ideas for your new automatic porch painter while at work, they ought to replace you with someone with more focus that will have better productivity, instead of trying to claim some stake in your painting business you do on the weekend.

Re:Two mostly similar choices

[scsirob]

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'.

You can get around this by posing the question differently. Simply suggest that you do not have that idea, instead one of your friends does. And your friend has asked if you could help out on the side. You are now doing the prudent thing by asking your employers legal department if they have anything against that.

Re:Two mostly similar choices

[celtic_hackr]

The thing is, companies really don't own any copyrights or patents, unless some person or group of persons enters into a contract with the company giving them the rights to it. This is usually called an employment contract.

There are three options when approaching this:

1) (re)negotiate the contract,
2) find another employer,
3) go it on your own.

Option 1 is best applied before signing an employment contract. Once employed you have far less negotiating leverage. Also, the mere fact of renegotiation alerts the company to warning signs that you may be unhappy at the company or have an idea you think is worth a lot of money which you don't want to share with them, even if it is in a different field. In either event, they are going to be watching you, going forward. Or they will say sure go for it! If they are more enlightened. But given the existing contract, I'm betting on the former.

Option 2 is probably the best choice, because you obviously aren't the right fit for the existing company.

Option 3 is your greatest opportunity, but also your greatest risk. You seem to be risk averse. Wanting to use the existing job to finance your new company, rather than just leave now before you've started developing your idea into product. Remember, as an idea, it belongs to you, and even a contract can't take that away. Mere thoughts and ideas aren't patentable or copyright-able. Only once you've transformed the idea into a concrete process of some sort, does it become something you can lose a lawsuit over. That won't stop them from suing you though, if they are so inclined. Not really much can be done about that, except to be prepared and keep excellent records.
There may also be limits in your contract on how long after you leave you have to wait before developing things. I don't sign these vile types of contracts, and also insist on changes to these boilerplate things. I have accumulated significant copyright on my own, and several patentable ideas in various stages of development.

Option 4, is to proceed and hide what you are doing, and risk infecting all sorts of projects with encumbered, infringing code or whatever. This is not really an option. It's a pseudo-option, an illusion, a glamour pool. It's a lose, lose situation. It may look attractive from some perspectives, but once discovered, either before or after you come to market you risk losing it all, and more, and discover it was a cesspool idea.

If you go with option 2, and your idea is not in a competing field, make sure you negotiate for changing the language so you can develop on your own time non-competing ideas.

What is common depends on Where

[icebike]

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.

Re:What is common depends on Where

[Peristaltic]

And that's exactly how they handle it at IBM- You get to choose between your job, and giving them first dibs on anything you may think up on the weekend. A condition of my employment at IBM Global Services was that if I so much as invented a better pair of scissors over the weekend, I was required to present my "invention" to management, or find myself in violation of my terms of employment. No longer work there.

A Contract Is What?

[Anonymous Coward]

Next time, modify the agreement before you sign it.

Re:A Contract Is What?

[Anrego]

May be fine if you have lots of experience and they have specifically saught you out...

For the rest of the world, people are usually just happy to have snagged a job.. the last thing they are gonna do is start making waves before they even get their first pay cheque. Most "negotiations" regarding this kind of boilerplate "everyone signs it" agreement is along the lines of "your employment is conditional on your signing this, if you'd prefer not to, be sure to turn in your card on the way out!"

Re:A Contract Is What?

[EdIII]

Next time don't even sign it.

The last W2 job I ever worked tried to force something like this on me as well. My response was a lengthy legal agreement in which it spelled out all IP that I currently owned, was involved in creating, limited the scope of the IP they wanted to control to their specific business domains, etc.

They never signed mine, and I never signed theirs. Received a couple of threats from HR, stood my ground, and it just quietly went away. Worked at that company for 3 more years without the signed contract.

Re:A Contract Is What?

[the_fat_kid]

"Pray I do not modify it again."

Re:A Contract Is What?

[TheGavster]

I tried this move at one employer with a very vague and all-encompassing non-compete/IP contract, and while I did keep the job and didn't have the sign, the manager I was working with became extremely irate and basically left the table while we were working out which clauses of the contract I was at odds with. That particular firm was quite small and probably didn't relish the cost of recruiting and hiring a replacement, but at a larger firm where I was one of many new hires I don't doubt I would have been out on the street that afternoon, printed cube nameplate or not.

Re:A Contract Is What?

[St.Creed]

I used to think that as well. Until I came to be in the position to make demands and say "well, too bad" when they didn't want to meet them. As it turned out, if your demands are reasonable, you're probably going to get most of them approved.

No contract is ever boilerplate. Sure, they have a template. Usually you will find very few people with the contract as originally proposed.

That having said, being freelancer I can appreciate the IP issues. So what I normally do is tell people in advance which projects I'm working on, and are mine. Just titles and a very short summary. Never had a problem with that.

I can also appreciate an employer not liking his workers to moonlight. It always spills over into your normal day job, even if it is just lack of sleep because you were so stoked from your new idea that you couldn't sleep. It always affects them. An open discussion about this, showing you understand those issues and how you will make sure they are mitigated, will usually go down well. Not always though - understand how your boss operates before doing anything.

Re:A Contract Is What?

[slimjim8094]

Nice try, but it would be an invalid contract because there was no "meeting of the minds" to assent to the new contract. Of course if the terms were unfavorable, you might not be interested in a valid contract, and just wanted to shut HR up... which is fine, but it's not an enforceable contract.

Re:A Contract Is What?

[Rakishi]

Wow, you lack a spine don't you?

"your employment is conditional on your signing this, if you'd prefer not to, be sure to turn in your card on the way out!"

And then they either spend another $10k+ looking for another potential employee or hire someone they deemed inferior to you. Finding qualified workers is generally a pain in the ass across the board in IT. So the company is on the hook as much as you are at that point.

Re:A Contract Is What?

[pla]

Of course if the terms were unfavorable, you might not be interested in a valid contract, and just wanted to shut HR up... which is fine, but it's not an enforceable contract.

This.

The terms of such agreements, without exception, contain nothing even the slightest bit favorable to the employee. Going forward without a valid contract, complete with the possibility of having them send you packing at a moments notice, usually works out more favorably than agreeing to their boilerplate.

Re:A Contract Is What?

[TheGratefulNet]

GOOD LUCK WITH THAT.

each time I tried, they immediately find a reason to say they don't want you anymore. they will pluck another servant from the tree-of-humans.

you have no bargaining power. NONE. you sign or you walk.

if you think otherwise, you are dreaming.

I hate this!! but I've found that this is reality in today's world ;(

Re:A Contract Is What?

[demonlapin]

A company officer would have to have signed it after the submission by the prospective employee in order for it to be a valid agreement. If said officer was silly enough to have signed it without reviewing it and any modifications, well, that's their problem.

Re:A Contract Is What?

[Anonymous Coward]

Next time don't even sign it.

The last W2 job I ever worked tried to force something like this on me as well. My response was a lengthy legal agreement in which it spelled out all IP that I currently owned, was involved in creating, limited the scope of the IP they wanted to control to their specific business domains, etc.

They never signed mine, and I never signed theirs. Received a couple of threats from HR, stood my ground, and it just quietly went away. Worked at that company for 3 more years without the signed contract.

This is what I did 6 years ago. I stalled, didn't return emails, made excuses like I forgot, dog ate it, that sort of thing, and eventually it went away. This is the second time I've done this in the last 15 years. It's surprisingly effective.

TALK to them

[swright]

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.

Attorney time

[nurb432]

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.

Re:ask a lawyer

[swright]

Oh no, not another "ask a lawyer" question.

As a general rule, this is mostly unenforceable and/or is trivially worked around.

That may be, but life is a lot simpler for everyone if we can all work by mutual prior agreement.

*all* contracts start in the favour of the people who wrote them. It's a game to make it mutually fair as much as it is to do a decent tax return or haggle for goods at the market. You may not like that it's a game (I don't!), but it is one.

You can't negotiate

[OzPeter]

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.

Read things before you sign them.

[Pathwalker]

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.

Have you talked to them about it?

[dirk]

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.

Re:Use an LLC

[XaXXon]

But they can just fire you. Ability to do stuff on your own time isn't a protected class.

A double edged sword.

[www.sorehands.com]

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.

Re:A double edged sword.

[NovaSupreme]

Go on..
What happened afterwards? Did you get MSI to accept its fault?

Re:A double edged sword.

[www.sorehands.com]

The workers comp insurance company settled. Then MSI paid a rule 68 judgment of $125k + interest, which was for a lawsuit stemming from their illegal firing, violation of the Mass. version of the ADA, the FMLA, and retailiation.

Re:Ethics

[El_Muerte_TDS]

It's also unethical for an employer to claim ownership of something that was a) not created on request of said employer and b) where the employee was not compensated for.
What you're basically are saying is that the dinner you make at home after work is property of the company you work for. That's rather ludicrous.

Also... ethics... it's just like religion. Everybody has their own set of rules.

Re:What?

[AG the other]

Why is this even legal?

It isn't in some states.

Please don't release anything as open source.

[Pathwalker]

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.

Oh Noes!

[PPH]

Not the media!

"Found guilty by the New York Times, they vowed to appeal their case to the Wall Street Journal".

Renegotiate your agreement.

[subreality]

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.

Re:Just change your terms of employment...

[mwvdlee]

Or... and I know this is going to sound insane... ask your boss if it'd be okay before going all agro on them.
That way you could keep your job even if they wouldn't mind you doing stuff on the side.

Almost certainly unenforceable

[MSTCrow5429]

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.

Re:Almost certainly unenforceable

[pacergh]

You're incorrect.

These agreements are enforceable. There are limits, and things well beyond the work you do for the company may very well be excluded from the agreement, but how often is that the case?

If you are a programmer, and work for a company as a programmer, and create a work on your own that involves programming, then it is related to the work you do for the company.

Beware the advice you receive on Slashdot about this.

If you think there is a chance you can make money off of a potential side project, protect yourself and your partners by hiring a tech startup lawyer.

Otherwise you may be paying a lot more in legal fees down the road.

And I am a lawyer, and this is an area in which I practice.

Re:Almost certainly unenforceable

[hey!]

I agree with you. That said, one thing that ought to be noted is that everyone is assuming this guy signed a contract; it doesn't say that in the summary. It just says:

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.

Stating that something is their policy doesn't necessarily make it so. They can't unilaterally impose something like that, although if you are working on a competing product in your spare time they wouldn't have to. You'd be in the soup in any case.

If it's something really unrelated to work and it's non-commercial, I'd say the best bet is to ask your employer. Let's say your company does video encoding software and you want to set up your running club's website. What reasonable objection could they have to that? If they *do* object, then I definitely *would* look for different work, because I wouldn't trust anyone that greedy.

I'd say in order of preference the courses of action are: (1) get permission; (2) see a lawyer; (3) don't do it.

I wonder if the submitter's company is one of those ones that hires its employees as "consultants" to avoid paying taxes. If so this could get interesting.

Re:ask a lawyer

[Anonymous Coward]

*all* contracts start in the favour of the people who wrote them.

you failed contract law

Re:ask a lawyer

[The Rizz]

The question I want to ask: You signed those papers, you knew what you were doing. Why back out now? There's this thing called work ethic.

Why is it not ethical for an employee want to keep the rights to something they created and did not get paid by the company for? (Unless they're giving you some kind of bonus for something you create, or you are specifically in a think-tank sort of job, you're NOT getting paid for inventing something for them!)

It's one thing if you create something as a direct result of your assigned work (i.e., you're building their mousetrap, and figure out how to improve it), but when it's wholly unrelated (perpetual motion), why should they have any claim over it? When it's related (hey, this mousetrap can be modified to catch kittens instead), there should be a process where you bring it to management and they either (a) pay you a bonus for the idea, (b) give you co-ownership of it, (c) devote some of your work hours to the project, or (d) drop all claims so long as you don't devote company resources to it (time/equipment).

Washington State law protects you if you live here

[TwineLogic]

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.

Re:I am worried about this myself.

[jholyhead]

Why the hell didn't you deal with this before signing it?

Desperation is an excuse for signing if even if they wouldn't budge, but it isn't an excuse for not even trying to budge them in the first place. They offered you a contract - you were in the position of strength at that moment and you bottled it. Now you are under contract and are in a position of weakness relying on your employer's goodwill. Not a place you want to be.

Talk to your boss first thing tomorrow. The longer you leave it, the harder it will be to change it.

Re:Use an LLC

[Anonymous Coward]

K2tech has the right idea.

First of all, if you do it on your own time, it is always your property, no matter what. Many HR departments have illegal disclaimers in their policies, you just don't bring it to their attention because you like your job. Just make sure that 100% of the time you spend at work is spent ONLY on your work, and not your side projects.

Segregate your LLC email and your personal emails. If your personal emails have anything in them that would mention the LLC or the project, that is where the lines are no longer black and white, and you may have a problem.

If you happen to go to lunch and mention the project to someone else or ask any questions, you need to compensate them for their time, usually through a free lunch. This is one of the better ways to ensure that you are documenting your time, on your time and other people's, never company time, and your IP will always stay yours.

Never plug a flash drive into a company PC that has anything that you have been working on loaded on it. Some companies auto-copy a flash drive plugged into it to be viewed at IT's leisure.

Never copy anything from your company onto your personal PC. If you wind up getting sued, you may have to have your harddrive cloned as evidence that can and will be used against you.

Good luck with your venture!

Every legal Ask Slashdot story ever

[tepples]

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?"

Contract Law is misunderstood by the public

[CuteSteveJobs]

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.

Re:Can't be proved

[pacergh]

This is not true. This kind of thing gets proven all the time. Think of all the time stamps on files. When things may be uploaded to something like Github. Or email messages to folks discussing the project.

Lawyers know how to prove this. To presume it's impossible is to invite a dangerous outcome.

Re:5.8 times minimum wage

[Tenebrousedge]

If your hourly rate is above 5.4 times the minimum wage as a computer worker ($27.63/hr), your employer may forgo paying you overtime.

Maybe not so restrictive?

[geezer nerd]

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.

I always stroked out and initialed those clauses

[msobkow]

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.

Renegotiate your contract

[aklinux]

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.

Strike it out when you sign it.

[Lumpy]

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.

Market's good

[Fujisawa Sensei]

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.

Two choices

[dskoll]

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.

Alcatel vs Evan Brown

[sacrabos]

Be careful. A zealous employer could ruin your life for you just having an idea while in their employ.

Re:Cross that section out

[David Gerard]

Cross out and initial.

In a case of such a clause being ambiguous, I got a letter from HR clarifying that what I did off company time and equipment was mine mine mine.

Employer != owner

[Slorv]

>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.

BT, DT: (Was Re:Two mostly similar choices)

[Terje Mathisen]

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

Joel Spolsky's take on this

[maple_shaft]

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