Dealing With an Overly-Restrictive Intellectual Property Policy? 467
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?"
Re:Two mostly similar choices (Score:5, Interesting)
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.
You can't negotiate (Score:3, Interesting)
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.
Ethics (Score:0, Interesting)
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.
Read things before you sign them. (Score:3, Interesting)
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.
A double edged sword. (Score:5, Interesting)
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:Just change your terms of employment... (Score:4, Interesting)
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.
Re:Two mostly similar choices (Score:5, Interesting)
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:A Contract Is What? (Score:5, Interesting)
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:Use an LLC (Score:2, Interesting)
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!
Re:Two mostly similar choices (Score:4, Interesting)
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:A double edged sword. (Score:4, Interesting)
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:Two mostly similar choices (Score:5, Interesting)
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 (Score:5, Interesting)
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:A Contract Is What? (Score:2, Interesting)
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.
Re:Two mostly similar choices (Score:4, Interesting)
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 (Score:4, Interesting)
Not just profs, etc...
My daughter works in the dining hall at UCSB, and she got a "Patent Amendment" that she had to sign.