Ownership of IP Question

touch7

Active Member
Joined
Jan 25, 2016
Messages
64
I just read my contract again in details and noticed something about ownership of IP. It basically says that (1) anything I work on at work is owned by them and a with a little research, it makes perfect sense for the company to prevent me from claiming ownership of work they paid me to do. Another interesting thing is that companies want to (2) own anything you develop that could be used to improve company processes even if you worked on that idea in your spare time which is a bit of a problem as a developer because I could work on something that is not in line with their kind of business and they could want to claim ownership but that is a discussion for some other time.

The contract has a statement that says that they own everything I work on at work and if I or another company I work for within a year of my termination patents an idea (or assists anyone to do so), I would need to let them know, otherwise they could claim that I've invented it while working for then and I'd need to prove otherwise.

The main question is if the next company made me sign a similar contract which states that they own any work I do for them and I assist them in getting a patent that my previous company claims I might have invented while working for them. Assume that they are a competitor.

Who owns the IP? The previous company thinks it owns my idea if they think I might have come up with it while working for them and the other company says I don't own things they pay me to work on. Besides how they'd determine when I came up with such an idea, is this not indirectly asking me to let them in on the things the new company is working on? I imagine this as "hey old company, here is a document of what my new company is working on and I need to check if you are fine with it". It just doesn't make sense, would you hire someone whose previous contract had such in it?

I'm definitely avoiding this kind of contract in the future as my previous one was not like this even though they owned the IP for things I worked on. I'd rather lose the opportunity as it might cost me more in the future as only competitors are willing to pay big for your skills.

Even though they are less likely to come after me, I just don't like this kind of wording and expectation. When I start my own company, I might end up asking the people I want to hire to send me the IP portion of the contract they signed with some if not all their former employers. One of them might have a like that claims to own everything they work on in the next 10 years and it would be in my company's best interest to avoid hiring such people. Even if I could win in court, I don't think it's worth the trouble.

The video "Why I won't work a developer job anymore" made me read my contract again and think about things as a developer.
 

Milano

Honorary Master
Joined
Feb 7, 2004
Messages
12,095
The contract has a statement that says that they own everything I work on at work and if I or another company I work for within a year of my termination patents an idea (or assists anyone to do so), I would need to let them know, otherwise they could claim that I've invented it while working for then and I'd need to prove otherwise.
Would need to see that actual clause as it was originally written, word for word.
 

cguy

Expert Member
Joined
Jan 2, 2013
Messages
4,890
How do they define “spare time”? At home? Non-work related, but during work hours or at the office or using company equipment?

In California, for example, anything done at home that isn’t direct competition to your employer and isn’t using company equipment is owned by the employee. So you have to keep things completely separate and not accidentally “tarnish” your private work with your employers resources (I.e., be careful what you search on their internet, what you use their photocopy for, what you discuss with their employees, etc.).

For the patenting, if you patent something within a year that looks like something you did for them, they are asking for the opportunity to verify this, which makes sense. If you don’t notify them, you are probably doing something dodge, so they will sue you for contract violation. My advice is to not patent anything for a year, or if you do make sure that it is completely unrelated to your prior job.

As far as the video is concerned, the guy’s father violated his non-compete and competed, it’s not really surprising that he got sued.

If you want to protect your home IP, make sure that your contract states that work done at home in private equipment remains yours (you may have also have it non-competing).

You can also typically give a list of projects that you currently own IP on as a predeclaration (I’ve done this at all my jobs for my home projects). These are then exempt from IP claims.

If you start a company, you definitely need to be aware of your employees non-compete constraints. I’ve had to forward this part of my contract every time I have received an offer.

Currently, I have a 2 year non-compete that prevents me from working at (or starting) any finance company.
 
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