Question: Intellectual property and employment
Posted by davidmcnab 8 years, 6 months ago to Technology
Consider the employment contract phrase "[any invention created by the employee] arising from the employee's employment with the employer [shall remain the intellectual property of the employer]".
What are the interpretations of "arising from the employee's employment with the employer"?
1. Does this include any kind of invention create by the employee after-hours, even if completely unrelated to the employment?
2. Does this include inventions that are inspired by the intellectual challenges of the employee's employment, but not connected to the employer's technology or products? (Example: someone working as a petrol engine designer at an auto company, who designs in his spare time a jet engine that could be used in a car).
What are the interpretations of "arising from the employee's employment with the employer"?
1. Does this include any kind of invention create by the employee after-hours, even if completely unrelated to the employment?
2. Does this include inventions that are inspired by the intellectual challenges of the employee's employment, but not connected to the employer's technology or products? (Example: someone working as a petrol engine designer at an auto company, who designs in his spare time a jet engine that could be used in a car).
Assuming you fit these criteria, if you invent something on your own time and with your own materials that is not directly related to what you were hired to invent you do not have to assign these to your employer. So the answer to 1 & 2 are no.
This is general legal principles and if you have a specific situation, you should discuss it with a competent attorney.
Jan
The problem was the Temp firm had a lengthy contract for me to sign and part of it was verbiage that took ownership of any invention or even software algorithm I invented/created as long as I was in their employment. There was no exclusion for what I came up with on my own time unrelated to them or a client. They said the invention clause only means pertaining to them or their clients. I told them that's not what the clause says and in a court they won't care what you or I say it means, they will only see what it says. I said if they want to make money off me they will fix it. They wrote in an exclusion clause that I was satisfied with and away we went.
Best thing to do if you are an inventor is to be a freelancer or start your own company and avoid the whole problem.
I think the answer is not 'if they sign, they are not worthwhile' but - as mccannon says - they must be cautioned to read carefully even if they despise legalese. And the existence of such a clause implies that it is worthwhile to the companies to 'net' unwary prey.
Jan
So the answer to your first question is No.
Admittedly, DeWalt was not your average company...they were actually honest and reasonable and didn't micromanage us at all.
Can't help much with your second question other than to say they would have to prove you got the idea "as a result of employment'.
If your an inventive person you know your inspiration can come from anywhere and sometimes, seemingly from thin air.
Your propulsion system may be different from the one your paid to work on but it is still a propulsion system none the less.
Your right, the contract is way too vague.
My friend's dad was an engine designer for GM. He had to sell the company his patent-able idea (modification to rotary engine design) for a dollar, but he got to keep the patent certificate for his wall.
To answer your questions...
1) Usually, yes.
2) Usually, yes.
If you really have a bad relationship with the people you work for, maybe you should get out anyway. If your not being paid to think, then by all means go somewhere where you are. Even if that means striking out on your own if you have to!
But if you are being paid to come up with solutions, and you signed that deal, I'd say that you are bound by it ethically.
I'll yield as well on your specific question. In my (limited personal) experience the non-disclosure agreement, the intellectual property assignment and the non-compete agreement are all on the same (rather long) piece of paper.
I will say in my defense, that often the solutions to a seemingly unsolvable problem only pop into my head after I walk away from it for a while. I thought they were protecting themselves from somebody solving the problem they paid them to work on, but only solving the problem after they had left their employ. Maybe they can't legally do that.
But are you guys really saying that while I can't say what they did, and I can't go to work for their competitors, I can sell my idea to anybody (with the possible exception of their competitors) as soon as I walk out the door, no matter when I came up with it? If those IP agreements are not enforceable in court, I suppose you can sign them with no intention of abiding by them.
That seems like one of those things that is perfectly legal, but still wrong to do if you say you agree. They often make employment conditional on signing the agreement, I always thought we were just getting the issue out of the way by having me assign intellectual property rights to them before we started as part of the deal.
Sure fooled me, Huh? Hell, I never thought much of Human Resources departments anyway.
I guess it is not as clear cut as I thought. You and Dbhalling are probably right, the guy needs to talk to a lawyer before he does anything.
when I go to a new website to look for jobs. The
Terms of Service take a very long time to read,
and then there is the Privacy Policy. I hate read-
ing these things, but I consider it irresponsible to
sign on to an agreement without reading it. (And
then, they insist on the right to unilaterally re-
vise it from time to time). And rental leases are
nearly as bad. I hate for leases to be longer
than the Encyclopaedia Britannica.