Do you have a side business in addition to a full time job?

[engineheat]

I'm about to start a full time job at a large company. But I also like to tinker at the side. One of my current project is kinda related to the product my employer makes, but does not compete with them. Imagine working at company that manufacture only firearms and you designed a "bump stock", a scope, or an accessory that may or may not enhance the performance of the firearm.

I wonder if I might violate some kind of non-compete clause that I will sign (probably a generic template). I'm also torn if I should tell them beforehand.

[ebastler]

As long as you only tinker at home, for fun, that's your own thing and your employer won't care. But if you are commercializing your side project, I would tell them -- maybe not before you sign up with them, but early in the game. You probably don't want to keep this a total secret; you will want to talk about your project with colleagues etc.. If your employer becomes aware of your side business via 3rd parties, while you tried to keep it a secret, that won't help your case.

Bear in mind that there can be "conflicts of interest" other than direct competition with your employer's product line. You might be tempted to use knowledge from your employer in your side projects, or may end up working with a competitor to market your side business product, or may decide to use a bright idea in your own product instead of your employer's new design. Such conflicts may be real, or just perceived by your employer -- that doesn't make a big difference for the way they would impact your employment...

Large employers deal with this kind of potential conflict routinely. They have disclosure forms to document and assess potential conflicts of interest. The outcome may be anywhere between a full release (no conflict, no problem) or a requirement to stop the side activity (or the employment). E.g. your employer might require you to disclose each side project before you embark on it, ask for a right of first refusal to commercialize it, etc.

[iampoor]

One of my current project is kinda related to the product my employer makes, but does not compete with them.

Your employer may see this differently.

I wouldnt do it if it may even remotely appear to compete with your current employers business. The potential conflict of interest is too great.

[engineheat]

Large employers deal with this kind of potential conflict routinely. They have disclosure forms to document and assess potential conflicts of interest. The outcome may be anywhere between a full release (no conflict, no problem) or a requirement to stop the side activity (or the employment). E.g. your employer might require you to disclose each side project before you embark on it, ask for a right of first refusal to commercialize it, etc.

Maybe keep it under the radar when I'm just starting out. (No need for them to think I won't be committed to my job and get frowned upon when I don't even know if the idea will succeed). Then, if the idea shows significant promise, let them know at that point. And if they want to license it from me, all the better. If they ask me to stop, then I will weight factors such as the ease of finding another job vs how lucrative my idea is.

[beanflying]

If you have to sign a contract with your employer check the fine print! I have had them in the past with limits placed on outside activities of a 'similar' nature. If you a developing a product around a similar industry you open yourself up for potential legal bs of having used their information and knowledge.

[engineheat]

Will they terminate me if I tell them on the first day that I have a provisional patent for the accessory? Again, the accessory does not direct compete with any of their product. It's an add on. Also, it's only a provisional patent filed, but I do intend to follow through with an utility patent later. I have not marketed it, only made a prototype. I have no concrete plan on what I plan to do with the patent.

What might happen? Do you think they'll immediately terminate me due to "conflict of interest"? I actually mentioned the device during my interview and they really like it, and it was one of the key reasons I got hired. Although I made no mention of patents.

My end goal is to actually license it to them. I have no intention of competing with them (it's technically not even competing with their product now, as I said earlier).

How do I navigate this sticky situation? On one hand, I believe my patent is valuable enough that I want to protect it and not just hand it over for free. On the other hand, I'm not so confident in my patent that I'm willing to risk my career at the company.

Please give some advice.

thanks

[ebastler]

No, I can't see why they would terminate you. Having had a good idea, and followed through on that, in the time before you were even employed by them, can't be held against you. 

But they may want to know what you intend to do with that design and IP: If you intend to productize it yourself, or license it to some other company, they may consider that a confict of interest -- for the reasons myself and others have described above. They may want to put some restrictions on that, or a right of first refusal, or they may not care at all. If you are open about it and disclose this early on, that increases the likelyhood that they won't consider it a conflict IMO.

[engineheat]

No, I can't see why they would terminate you. Having had a good idea, and followed through on that, in the time before you were even employed by them, can't be held against you. 

But they may want to know what you intend to do with that design and IP: If you intend to productize it yourself, or license it to some other company, they may consider that a confict of interest -- for the reasons myself and others have described above. They may want to put some restrictions on that, or a right of first refusal, or they may not care at all. If you are open about it and disclose this early on, that increases the likelyhood that they won't consider it a conflict IMO.

No way I would license it to other companies. Even if I planned on doing it, it'll be very unintelligent for me to tell them that.

The goal of any patent is to make money. I'd make far more money if my employer licensed it and incorporate it into one of their product, since they are a big company with huge resources. Even if they paid me $0.05 on every item, it's a good sum. This is my preferred route.

If they are not interested in licensing it, then I guess I will try to market it myself (actually, have a partner run it since I hate running a business).  My main concerns are:

1. Employer decides they are not interested, but also tells me I can't do it on the side (or have someone else run it on the side). This also has the side effect of making them think I'm not dedicated to my job. (not a good start)

2. Employer likes the idea, but wants me to develop it as an employee, which essentially forces me to hand it over. "You develop it here, we'll pay for the utility patent, and you get a "innovator of the year" award."

Maybe I should not bring up the fact that I want to run a side business. Maybe I should just disclose the idea when the agreement asks for it. And then the ball would be in their court to ask me about it. Then I can tell them I hope to eventually license it to them as I believe it's in the interest of the company. I feel this would make them less likely to think I'm not dedicated to my job. It actually make it seem like I have the best interest of the company in heart (kinda true, except I want to make a reasonable royalty as opposed to giving it away).

If they are not interested at the moment, then I can respectfully ask them if I can develop it as a "hobby business" and if it goes well I'd be willing to give them the right to first refusal, while assuring them of my loyalty to the company and my day job.

What do you think?

[engineheat]

No, I can't see why they would terminate you. Having had a good idea, and followed through on that, in the time before you were even employed by them, can't be held against you. 

Some (many) bosses want you to not only sell your time to the company, but also to sell yourself to the company.
Universities and government companies are usually much more flexible compared with private companies -- you are paid by tax payers, not by the boss himself.
When money comes from the pocket of your boss, he wants you to never even thing on any other ideas -- that consumes your thinking power and hence reduces the value they can extract from you.

Yeah that's my worry.

Another option is to not disclose it to them. Make my provisional application as comprehensive as possible. Do not work on the project while employed there. File an utility patent anyway later. If I decides to quit the job later, then I will develop it. They can't say I took their IP since my provisional was complete and covered everything and it was dated before my employment.

Couple of years down the road I once I'm more established at the company, I can try pitching it to them about licensing. (I haven't ran a side business so I can't get in trouble). I'd have enough experience by then it won't be hard to find another job, so I'd be more confident by then if they are unfair about it.

[EEVblog]

I wonder if I might violate some kind of non-compete clause that I will sign (probably a generic template).

Maybe. What does it actually say?

I'm also torn if I should tell them beforehand.

It easier to seek forgiveness than to seek permission.

[engineheat]

Maybe. What does it actually say?

Haven't seen it. Undergoing the background check now. Still got more than a month till the start date. I'm afraid asking for an advance copy of the employment agreement will cause suspicion. I assume it's pretty stringent given it's a large company, but does not bar all outside activities (since the guy who interviewed me mentioned that he had a side business but it's "frowned upon")

It easier to seek forgiveness than to seek permission.

So I should probably keep my mouth shut. I guess I'll just consult a lawyer after getting the employment agreement, and if what I'm planning doesn't outright violate any clauses, I'll just do it. It's most likely going to be in a gray area and when you ask for permission in this case, getting a "NO" is 99% likely. After all, the company expects you to "get enough rest" after work so you'd be more energized during the day. (This is what the plant manager told me when we chatted about his side business)

[EEVblog]

Haven't seen it. Undergoing the background check now. Still got more than a month till the start date. I'm afraid asking for an advance copy of the employment agreement will cause suspicion. I assume it's pretty stringent given it's a large company, but does not bar all outside activities (since the guy who interviewed me mentioned that he had a side business but it's "frowned upon")

They can't touch you legally as you developed it before you joined, so that's good.
But sounds like that may be an anal company, odds are they are not going to like it.

So I should probably keep my mouth shut. I guess I'll just consult a lawyer after getting the employment agreement, and if what I'm planning doesn't outright violate any clauses, I'll just do it.

That doesn't stop them suing you out of existence though, or attempting to do so.
That's a trap a lot of people make - "but my lawyer said it's ok!", tough titties, anyone can sue you at any time for anything. The person with the smallest pockets usually loses even if they win.

[engineheat]

That doesn't stop them suing you out of existence though, or attempting to do so.
That's a trap a lot of people make - "but my lawyer said it's ok!", tough titties, anyone can sue you at any time for anything. The person with the smallest pockets usually loses even if they win.

I was told by someone on the "other side" that this is unlikely unless it's super bad (like if I took IP developed in the company and took it to a competitor). The bad PR would be disastrous if a large company went after their employee like the way you mentioned. We live in the world of social media now so it's probably unlikely.

I'm thinking about just patenting it but not marketing it. Patents take a couple of years to get granted anyway. By that time, I might already be at another job. Or if I propose licensing to them by then, if they say no and tells me to not work on it, I can change jobs.

Either way, I feel I should definitely file the provisional before I start. If I don't, then anything I develop during employment (even on weekend) would belong to the company. I might as well just abandon it. That's the reason I'm asking here. The provisional done "right" by a lawyer is going to set me back $2500 roughly and I got a couple of weeks to decide to file or not.

[rt]

If you were to cease employment with the firm after a couple of years and then focus on commericialising your IP how long of non-compete period would you be signing up to on your upcoming contract?  You've said you haven't seen the contract yet but just a question to bear in mind.

Recently, I had my eyes opened to how widespread the use of non-compete clauses in the US is from a UK radio program (http://www.bbc.co.uk/programmes/p05n4zw0).  Apart from California it seems pretty universal?

rt

[R005T3r]

I'm about to start a full time job at a large company. But I also like to tinker at the side. One of my current project is kinda related to the product my employer makes, but does not compete with them. Imagine working at company that manufacture only firearms and you designed a "bump stock", a scope, or an accessory that may or may not enhance the performance of the firearm.

I wonder if I might violate some kind of non-compete clause that I will sign (probably a generic template). I'm also torn if I should tell them beforehand.

Read your contract before doing something you may regret,  and by the way if you have designed a product which is firearm-related, before say something I suggest you to inform yourself very well, because governments are generally very stingy about "innovation involving firearms" and if you do a false step, they probably won't forgive you! Also, there are 2 topics that are a minefield:
1- full auto conversion
2- illegal fabrication

[coppice]

I'm about to start a full time job at a large company. But I also like to tinker at the side. One of my current project is kinda related to the product my employer makes, but does not compete with them. Imagine working at company that manufacture only firearms and you designed a "bump stock", a scope, or an accessory that may or may not enhance the performance of the firearm.

I wonder if I might violate some kind of non-compete clause that I will sign (probably a generic template). I'm also torn if I should tell them beforehand.

Most of what a technology company makes is stuff that either didn't exist a few years ago, or existed in a radically different form. Companies need to do new things all the time to survive, so there is very little they might reasonably consider has no chance of competing with them in a couple of years. Perhaps if you worked in a firearms company and had a sideline in basket weaving you might be OK, but a sudden fashion for basket weave holsters might change even that picture. 

[engineheat]

I'm about to start a full time job at a large company. But I also like to tinker at the side. One of my current project is kinda related to the product my employer makes, but does not compete with them. Imagine working at company that manufacture only firearms and you designed a "bump stock", a scope, or an accessory that may or may not enhance the performance of the firearm.

I wonder if I might violate some kind of non-compete clause that I will sign (probably a generic template). I'm also torn if I should tell them beforehand.

Most of what a technology company makes is stuff that either didn't exist a few years ago, or existed in a radically different form. Companies need to do new things all the time to survive, so there is very little they might reasonably consider has no chance of competing with them in a couple of years. Perhaps if you worked in a firearms company and had a sideline in basket weaving you might be OK, but a sudden fashion for basket weave holsters might change even that picture. 

It's not firearm related. I only used it as an analogy.

I get your point. But they can always ask me to stop once they actually have a competing product released or are planning to release. Until then, my product is not directly competing with any of theirs. It does not take away their customers. I might even encourage buying their product. So I think I'm just going to see if the employment agreement specifically ban outside activity "in a related industry." If not, then I honestly don't see how my product "compete" with any of theirs.

And if the agreement specifically bans what I want to do, then I will simply not do it. I will not run a side business, but I'm still entitled to experiment on my own and file that provisional before employment, and follow up with an utility later. This will at least ensure I have the patent with me in case I leave the company later, and after any non-compete period expires (like 1 or 2 years), then I can still do my project. Or, if I stay in the company, it'll be a lot easier for me to proposing licensing with them if I have an utility patent than a mere provisional. By then I would also have more experience and less cash crunched so I'll be less vulnerable if they played hard ball.

Overall, I feel I should get that provisional filed regardless. Not doing so would equates to giving up the idea. Because once I have a history of working for them, any patents I file later would potentially have lots of legal bs. Do you agree? This is really the most important question I'm asking now

thanks

[ebastler]

Either way, I feel I should definitely file the provisional before I start. If I don't, then anything I develop during employment (even on weekend) would belong to the company. I might as well just abandon it. That's the reason I'm asking here. The provisional done "right" by a lawyer is going to set me back $2500 roughly and I got a couple of weeks to decide to file or not.

Filing a provisional is definitely a good idea. Since you mainly need it to show what you already had (in mind) before being employed there, I don't think it's absolutely required to do it "right" and pay big money to a patent attorney for this. It is not uncommon for a provisional application to consist e.g. mostly of a scientific paper that is submitted verbatim, and is in no way structured and worded like a "proper" patent. Just to document what you have, that's fine and costs just a small fee at the USPTO, I believe.

Only if you feel that this is a "hot" field, and you need to stake as wide and solid a claim as possible with your provisional application before someone else does, the money for a patent attorney would be justified IMO.

Beyond the "file it before you start there", I think you are overthinking this. You have mentioned that you told them about your idea in the job interview already. So once you have signed up with them, on one of your first days, tell your new boss: "Oh, by the way, I did follow through on my idea and have actually filed my first provisional patent application!", and ask him for advice on how to proceed.