Contract clause enforcable or not ??

[2dye4]

A clause in an employment contract that is signed some time ago had a statement to this effect.

" Any intellectual property devised, documented or reduced to practice while employed with ( company name ) will be assignable to the company"

It's not exact but you get the idea. The contract claims the right to any intellectual property created whether business related or not created while employed at the company.

I know I signed it but in the boards opinion would it really be an enforceable clause???

After all many of us moonlight and have side interests. I cannot imagine this employer being given the right to OWN me totally for the duration of my employment.

I will strike out any such statement from now on whether it means i lose the position or not.

 

[zdas04]

If you want advice from engineers on a legal issue, we'll give it, but if it is serious you'd be better served by talking to a lawyer.

The short answer is "it doesn't matter". If you invent something in your garage while working under that agreement then your employer has the option of suing you to gain the rights. If they sue you you will not be able to defend a lengthy case without losing everything you own so you'll settle by signing the invention over to them. By the time a court could decide you'd by bankrupt and broke and out of work.

That language represents a battle that most of us would decide not to fight. If you've invented a cheep way to turn methane into a fuel that is liquid at room temperature you might want to quit, change states and file a patent. If it is anything less valuable than that you might want to offer it to them. They may just sign over any assumed rights. They may not.

As to striking it out, many companies have a take-it-or-leave-it attitude to employment contracts and they will often withdraw an offer if you have the effrontery to strike out a clause.

David Simpson, PE
MuleShoe Engineering

http://www.muleshoe-eng.com

Please see FAQ731-376 for tips on how to make the best use of Eng-Tips Fora.

"It is always a poor idea to ask your Bridge Club for medical advice or a collection of geek engineers for legal advice"

 

[FreddyNurk]

To my mind, whilst on company time, with use of company equipment and so on, the company owns the intellectual property.

What you do whilst not paid for services by said employer (either as an hourly rate arrangement, contract for specific service) is probably your intellectual property, but really all discussions here are moot, its what gets to court that counts.

Other means of muddying the waters are where you may have come up with a service or concept that is only marketable to your employer's existing clients and thus it could be argued that they have a right to at least a share of intellectual property developed.

Such contract clauses are quite normal, its the company that takes the risk that the (generally salaried or hourly rates) development will turn into something profitable, whereas you get the (supposed, particularly in this market) security of a fixed employment deal.

 

[ajack1]

I would tend to agree with FreddyNurk in that it means during company time and or using company resources.

If you took the argument that you work for the company 24/7 then you could sue them if you had an accident in your garage for failing to provide a safe working environment.

However the only good advice is speak to a lawyer.

 

[desnov74]

I developed some IP and sold it. Not rich, but made some money. So from my experience, rather not legal advice I'd say the following:

1)Don't do anything at your employers office NOTHING, no EMAILS, NO PHONE CALLS TO ATTORNEYS. Especially on their equipment (phones, computers, etc). Plus its unethical to waste their time.

2)Keep an inventor's notebook in a bound-composition type, number and date pages. Record what you did but also when and where.

3)Periodically have someone review and witness the notebook's progress, and have them sign a non disclosure agreement. Either an attorney, patent agent, or registered engineer.

 

[Ron]

The clause is open to interpretation. Guess who gets to interpret? First the company, then a judge, if you elect to fight it.

The clause would be termed "overly broad" and you could probably get it set aside, but it would likely cost a bunch of money to do so. If you've been employed there quite a while, you could probably argue changed conditions, evolved personal interests, etc, but who know how successful any of that would be.

As David said, you'd have to do a value decision.

 

[2dye4]

Desnov74

I think you have a good answer. You must document the independence of the work and be prepared to fight it out in court.

I just can't understand why a company would think it has the right to anything invented by an employee even if very far removed from the companies business. It seems like outright brazen theft.

It could be the wording is just in there to strengthen the companies case in the event you did try to patent work related IP on your own and they would never try to take unrelated things.
But i think it's not proper. I hope a case comes up to settle this bit of corporate aggressiveness and clarifies the necessity for the work to be related or derived from for action to be possible.

 

[MacGyverS2000]

Typically (but not always), if the "idea" can be considered outside the realm of the work you are involved with, the "we own it" clause doesn't hold up. For example, if you figure out a way to separate oil from water cleanly while working on assembling a building, you're reasonably safe... but you'll still end up fighting for it in the end, most likely.

Dan - Owner

http://www.Hi-TecDesigns.com