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

[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

[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

[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.

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.

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.

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:ask a lawyer

[Anonymous Coward]

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

you failed contract law