What if you like to invent but your company wants to own all your IPs?

[engineheat]

If you are an independent employer who loves to tinker and come up with new devices in your spare time, but the company that you work for has an agreement that any invention or IP you come up with belongs to the company, even if it is done outside of work or not related to the company's activities.

Any options? That really takes the incentives out of tinkering.

thanks

[ataradov]

This may be illegal in your state, check your state law.

[bd139]

A number of years ago I was working for a company who issued a contract with this as an amendment.  I asked them to change the clause specifically to include only in the line of normal duty and not during personal time. I got told that they wouldn’t enforce it ever and it was just a legal thing (bull-fucking-shit) so I quit. This turned some heads as I was quite senior in the company so I got a new contract and a welcome back 20% rise (because it was cheaper than the contract rate I quoted when after two days they worked out I was indispensable). 

Best option is always to walk away from predatory clauses like that.

[RandallMcRee]

A reasonable company will have a workaround but it is up to you to figure it out and press for it. At my company you must list exemptions specifically. So, yeah, when I invent a new turntable motor my employer won't care. Anything else--not mine.

[Jeroen3]

They can only enforce this by court and only on subjects that would compete with the company.
Don't compete with your employer with projects at home.

[Mr. Scram]

If you are an independent employer who loves to tinker and come up with new devices in your spare time, but the company that you work for has an agreement that any invention or IP you come up with belongs to the company, even if it is done outside of work or not related to the company's activities.

Any options? That really takes the incentives out of tinkering.

thanks

I've had this excluded before signing the contract. If it isn't made for my employer or a customer of my employer, it's not theirs.

[Mr. Scram]

A reasonable company will have a workaround but it is up to you to figure it out and press for it. At my company you must list exemptions specifically. So, yeah, when I invent a new turntable motor my employer won't care. Anything else--not mine.

That's something I would refuse, if I'm honest. They can can do the reverse and list what they want included beforehand, if they insist.

[Mr. Scram]

They can only enforce this by court and only on subjects that would compete with the company.
Don't compete with your employer with projects at home.

This massively depends on both the country you're talking about and the contract you agree on. Blanket statements like these only make sense if you define the boundaries.

[Jeroen3]

This massively depends on both the country you're talking about and the contract you agree on. Blanket statements like these only make sense if you define the boundaries.

True. Court and legal system in US works vastly different than europe. Didn't pay attention to the flag  .

[HalFET]

True. Court and legal system in US works vastly different than europe. Didn't pay attention to the flag  .

Yeah, in Europe they'd have a lot of trouble enforcing a clause like that. In the US not so much I would expect...

[Mr. Scram]

Yeah, in Europe they'd have a lot of trouble enforcing a clause like that. In the US not so much I would expect...

Be careful though. I've seen someone in the EU get in a huge amount of legal trouble because of something common knowledge said was unenforcible. It ended up costing tens of thousands of dollars.

[floobydust]

Old crappy companies have the overbearing IP agreements that say they own ALL your inventions, ideas, works, even conceived outside normal working hours. Refuse to sign that shit, but it's not easy when you are being hired. I've said "no" and they either strike that ("ALL") clause, or I seek council and go to an IP lawyer to change the contract. New employers do not like this.

You can tinker on anything outside your employer's products or industry, the inclusion clause I see lately is "related to the [employer's] business".

It makes sense- as some people develop a competing product all the while working for a company, with the inventor's full intention to quit and immediately start a competing business.

I also encounter IP agreement clauses stating I will not work on any company X technology for (usually 1-3 years) after I quit company X. These do not hold up in court, as company X "cannot take away your right to prosper" and prevent you from taking a job somewhere.

[T3sl4co1l]

I also encounter IP agreement clauses stating I will not work on any company X technology for (usually 1-3 years) after I quit company X. These do not hold up in court, as company X "cannot take away your right to prosper" and prevent you from taking a job somewhere.

But they do give your potential future employer something to think about, at least in states where such clauses have held up (e.g., not in California).  Their case may not be very good, but legal expenses are legal expenses, and a smaller employer may not be willing to risk that.

Tim

[Mr. Scram]

Old crappy companies have the overbearing IP agreements that say they own ALL your inventions, ideas, works, even conceived outside normal working hours. Refuse to sign that shit, but it's not easy when you are being hired. I've said "no" and they either strike that ("ALL") clause, or I seek council and go to an IP lawyer to change the contract. New employers do not like this.

You can tinker on anything outside your employer's products or industry, the inclusion clause I see lately is "related to the [employer's] business".

It makes sense- as some people develop a competing product all the while working for a company, with the inventor's full intention to quit and immediately start a competing business.

I also encounter IP agreement clauses stating I will not work on any company X technology for (usually 1-3 years) after I quit company X. These do not hold up in court, as company X "cannot take away your right to prosper" and prevent you from taking a job somewhere.

Not being allowed things related to the employer's business still doesn't make sense. You're obviously going to tinker with things related to what you're working on. If they want to own it, however, they should pay for it. I'm not working for free. Well, I technically give away a lot of hours, but that's my own choice

[razberik]

I also encounter IP agreement clauses stating I will not work on any company X technology for (usually 1-3 years) after I quit company X. These do not hold up in court, as company X "cannot take away your right to prosper" and prevent you from taking a job somewhere.

This works in CZ, however company X is obliged to pay that person 50% of his salary by law.
I know case when this happened. Very well paid manager told he quits for better Y company and company X said "No, we will pay you 50% and you are not going to work for Y".
It was 6 months of vacation for him with royal salary. Well spent time traveling around the world, basically for free.

[floobydust]

Some companies do hire a bunch of engineers from a competitor which can be quite damaging and expensive lawsuits result.
For one-of hires, I find future employers quite happy to hire someone whom worked for a competitor. If you can prove you applied for the position vs they head-hunted you, it's OK.

In Canada, the courts rule in favour of the employee having a right to have a job, verses be unemployed due to an overreaching IP clause signed at a previous employer, preventing one from working.


Tim, how are you as a consultant, handling IP agreements because you work on a variety of industries and companies, eventually these IP agreements mean you can't work on it, as you already have.

[Mjolinor]

But they do give your potential future employer something to think about, at least in states where such clauses have held up (e.g., not in California).  Their case may not be very good, but legal expenses are legal expenses, and a smaller employer may not be willing to risk that.

Tim

Are there any cases where it has held up? I have never seen one and any people I have worked for have removed it without any questions or objections. I recall at least three times in the States, Florida, Boston and Kansas, there are probably others because I have always refused it whenever I have worked over there.

[T3sl4co1l]

Are there any cases where it has held up? I have never seen one and any people I have worked for have removed it without any questions or objections. I recall at least three times in the States, Florida, Boston and Kansas, there are probably others because I have always refused it whenever I have worked over there.

Typically, if offered with a bonus or some kind of compensation, it holds.  Related: https://www.law360.com/articles/607915/4-noncompete-cases-you-might-have-overlooked-in-2014

Tim

[thermistor-guy]

If you are an independent employer who loves to tinker and come up with new devices in your spare time, but the company that you work for has an agreement that any invention or IP you come up with belongs to the company, even if it is done outside of work or not related to the company's activities.

Any options? That really takes the incentives out of tinkering.

thanks

Yeah, I've been down this rabbit hole. You may have some wiggle room.

If you signed an agreement to this effect, when you joined, then the agreement may be illegal, depending on its exact wording and the law (including common law) that applies in your jurisdiction. You would need good legal advice to answer this.

In Australia, for example, it may be illegal  - *may*, depending on the exact wording - because it constitutes a restriction on trade, especially the part about "not related to the company's activities". It interferes with your right to earn a living.

If you signed an agreement to this effect after you joined (was it in the form of a deed?), then you may be able to claim you felt coerced into signing it, you didn't understand it, you had little opportunity to seek independent legal advice at the time, and when you joined the company you had no idea that company would try to own all your creative output in this way. You legal adviser may advise that you have grounds to contest the validity of the deed.

Some end-runs may be available to you. One is to form a company, and do your tinkering for your company. You assign your tinkering IP to your company. The company owns your IP. If your current employer claims it owns all your work, even if done for another employer, then that seems like a case of arrogant overreach to me, and an illegal restriction on trade. Again, consult a legal adviser.

A second is to do your tinkering in the form of a part-time research degree at a college or university. You have to navigate the IP agreements of the institution, but that can be easier than in the case of corporate agreements. You then claim that your IP was created as a student, and that the scope of your employers' agreement says nothing about this situation and should not extend to this situation. Again, consult a legal adviser. In Australia some years ago (don't know about now), research degrees were govt. funded so this was financially practical.

A third, is to resign from the company, then offer your services as a contractor. This is a ballsy move, but it can work if they need you right now. This may free you from your current IP agreement.

If you want to understand your rights, you will need to spend money on good advice. Good advice is expensive. Be warned that there are some idiot lawyers out there.

Why do companies want you to assign agreements like this? The corporate lawyers love it, because they think it gives them certainty: no ifs or buts, the company owns everything. What could be simpler?

Managers love it because, as non-creative people themselves (generally speaking), they see you as a resource to be controlled, owned, mined, and exploited. Your life, your creative life, is irrelevant. You, as an object, have potential value and management wants to extract it with as few impediments as possible. They may pretend to be benevolent empaths, but you learn the truth of the matter when it gets down to legal agreements over IP.

Let me stress: you exact position depends on the exact wording of whatever you signed. Good advice will cost you.

But let me stress too: tell your employer, in your mind, if not out loud, to Foxtrot Oscar, Bravo. One way or another, do what you want. It's your life.

[Mr. Scram]

Obviously, if a company makes a habit out of making life hard on employees, they're more likely to refuse any changes. This way, it could serve as a warning. If they put it in just to be sure, they shouldn't put up too much of a fight when you ask for it to be changed.

[tggzzz]

A number of years ago I was working for a company who issued a contract with this as an amendment.  I asked them to change the clause specifically to include only in the line of normal duty and not during personal time. I got told that they wouldn’t enforce it ever and it was just a legal thing

And the obvious retort is "OK, that's good; so there's no problem with deleting that clause, is there?".

I've seen many worse clauses with multiple students renting a house,  e.g. "you need a guarantor and you are jointly liable for any damage". So, if someone else's offspring sets the place on fire, I'm responsible for rebuilding costs? I think not. Frequently the owners/agents had merely copied a tenancy agreement without reading it, and were quite happy to change it!

(bull-fucking-shit) so I quit. This turned some heads as I was quite senior in the company so I got a new contract and a welcome back 20% rise (because it was cheaper than the contract rate I quoted when after two days they worked out I was indispensable). 

Best option is always to walk away from predatory clauses like that.

Quite right too.

I had a clause in a patent agreement that said "you will take all action necessary to get this patent granted". I questioned it and got similar "soothing" (ahem) statements. It was a PDF document, so I hand edited the PostScript to insert the magic word "reasonable", then signed that. They didn't notice, but the next patent agreement PDF was locked

They also sent me a separate document for getting a patent in the US, months after I had left the company. It had similar clauses, so I hand added the word "reasonable" in all the relevant places, signed and dated each change, and returned it. I heard nothing more.

[Mr. Scram]

It's alarming how many people won't read anything they sign. When I ask for the opportunity to read a document before signing, I'm consistently met with surprise, which tells me most people blindly sign whatever is put in front of them. No one ever objects to the question, though.

[EEVblog]

If you are an independent employer who loves to tinker and come up with new devices in your spare time, but the company that you work for has an agreement that any invention or IP you come up with belongs to the company, even if it is done outside of work or not related to the company's activities.

Any options?

Yes, leave.

I once interviewed at a (in)famous company were the owner was a nutjob who wanted to be the biggest patent holder in the world, they would file hundreds of variants a year just so he could claim he had more patent than Edison or something.
Anyway, got to the final interview with the head honcho sidekick and they started grilling me on the stuff I do in my spare time. They said I can't do that any more, and I thought they meant tech stuff, but nope, when quizzed on it they said I wasn't even able to write a gardening book, let alone anything technical.
I laughed and left.

[EEVblog]

It's alarming how many people won't read anything they sign. When I ask for the opportunity to read a document before signing, I'm consistently met with surprise, which tells me most people blindly sign whatever is put in front of them. No one ever objects to the question, though.

My Altium contract was a doozy. It said in no uncertain terms that everything you invented PRIOR to working at Altium became the property of Altium! unless you declared in writing detailing all previous projects and ideas you wanted to claim. I gave them a 13 page report listing every project and idea I had, and they were stunned, no one had ever gave them a list before. They signed it.

[Red Squirrel]

Workplace agreements are ridiculous, but sadly most big companies have them.    Some even go as far as dictating stuff like what industry you can't work in even if you stop being an employee.  For example I'm pretty sure I recall reading that Microsoft does not allow employees to go work for Google.  An ISP may not allow you to go work for the competition, etc. It's all too typical.   The company I work for does have a clause that anything I do on my own time, they can take ownership of it if they want, though I've never heard of it actually happening.  I think it's BS and this stuff should be illegal.  Companies should not be allowed to get into your life when you're off hours.  If you show up and do your job, then they should not be able to dictate stuff you do on your own time.

Leaving or not signing is not really an option either.  There's not really a lot of high paying jobs now days unless you want to move to a big city.  They know this, so that's why they can get away with these ridiculous agreements.