Asklemmy @lemmy.ml MNByChoice @midwest.social 9 mo. ago

How to protect Intellectual Property from new employer

Pretty sure I will be asking a lawyer, but I want to learn more words and concepts first.

A possible new job wants to own any intellectual property I create and wants me to declare anything I want to keep as my own. This seems normal in my industry as they will be paying me to do some thinking.

Issue is that I have a number of ideas I have been developing. I am going to float some of them as products in my own time, though this may be years from now. Most of these are outside the current market for the company as far as I know.

How is this typically handled? I presume I don't need to have copyrights or trademarks prior and can just list tentative titles.

I am also a little unclear on the spread between "intellectual property" and "an idea I am playing with".

Thoughts? Concepts to investigate?

Edit: I did Internet search this, but I have not found working keywords.

43 comments

NAL, but have heard of these. Amazon was really bad about it a few years ago.

General rule, anything you do on company time/devices/premises is theirs. That is enforceable for sure, and it's provable.

Anything you do in your own time is generally unenforceable, unless you still code/materials or something from them. Caveat being that it can't conflict with your work. i.e. if you work for Expedia and start a new travel company you may be in an enforceable grey area, "They stole company secrets to compete with us". However if you work for a game company and make your own game, you're probably fine.

Read your contract, know it upside down and sideways, that's going to be the guiding principal.
- Anything you do in your own time is generally unenforceable
  
  With the important caveat that your employment contract may include clauses that give them rights over that stuff anyway, and even if they're unenforceable you could still end up having to fight in court over it.
  
  Definitely something to keep in mind when reading the contract over, and ideally get a lawyer to take a look. It can be expensive, but weigh that expense against the potential expense of what would happen if you get screwed over.
  
  Yeah that's the bit I remember when Amazon was launching their game studio. It was deep in the fine print that anything you built even on your own time was owned by them, and they got flamed pretty hard by it to remove it. Important to always check for that crap, it's usually unenforceable, but remember by unenforceable I mean "You're going up against your company's lawyers. You'd probably win, if you put up a ton of your own money to fight that the contract shouldn't be valid in court with your own high price lawyers"
- This is correct. Anything you make on company equipment, or on company time, is owned by the company.
  
  You want to work on your own stuff, had to be off the clock and off company property.
I got my contract modified to exclude anything I do outside of work
- I did the same. Anything that I do on my own time on my own equipment is mine
I've tried to get several companies hr to explicitly say but have never gotten a clear answer. Like the other person said, if it's on company time with company resources it's theirs. If it's yours it's yours. Until it isn't. I just keep to myself, nobody needs to know what I'm working on besides myself or anyone I trust who I'm working with. The only reason you should even disclose any of these thing you might be working on is if there's already something they can take, not just an idea. Ideas can be stored securely in your brain until you need them.
- I just keep to myself, nobody needs to know what I'm working on besides myself
  
  And for OP, this includes Lemmy
- I don't think keeping it quite will work for me. I am going to start companies on a few of them.
  
  You need to form llcs for any of them before you're employed, then have a lawyer revise your employment contract to reflect the protections needed to retain those companies IP that you create during your employment.
  
  Speaking from experience, employers want someone who will sell them their entire life. Good luck.
If there are any ideas you want to make sure you protect upfront, write them down & mail them to yourself.

Don’t open it when it comes back & you’ll have postmarked proof the idea was yours on the day you mailed the letter.

That’s what they taught us film school in the early 2000’s anyways.
- You have to send it certified mail. Unopened, the document is considered as old as the postmarking. Often called a poor man’s copyright.
I actually have a friend who's involved in a situation like this right now. He got laid off from his old job a few months back and while he was job hunting he started working on a project with a couple other friends that could be worth a fair bit of money. He's had job offers since then and he got a lawyer to write up a description of the project he's working on that could be inserted into those "I'm keeping the rights to this stuff" contract sections.

It's a bit different for him because it's stuff that he's actively working on right now, though. It sounds like your case might be simpler, if it's stuff you haven't done yet and don't plan to try working on while employed with this current employer I suspect you won't need to worry about it. Though of course, IANAL.
- That is great. Thank you are sharing. I was hoping the solution was that direct.
- Is the former employer of your friend trying to claim ownership of the project after laying him off??
  
  No, that's not the concern here. He's getting job offers from new employers while he's midway through this personal project, and he wants to make sure the new employers don't have anything in their employment contracts that would end up grabbing it.
  
  The old employers trying to claim it was also a concern, but that wasn't what OP was concerned about so I didn't mention it. He had a lawyer check over his old employment contract as well to make sure there wasn't a problem there. As long as he's not using proprietary tech retained from the old job (and he's not) there's no problem there.
You need to talk to a lawyer. The laws regarding this will vary by state, and a lawyer can read the contract and advise you accordingly.
- Thank you. That seems to be consensus.
I would imagine writing down all of your ideas and a brief description, having them notarized, and keeping them sealed away somewhere for safe keeping would cover your grounds pretty well, and doing it that route would mean you wouldn't have to disclose anything to someone who may have the idea to steal or "borrow" from any of your ideas.

It would be pretty hard for a company to claim you came up with something on their time when you have a notarized dated copy proving you had it before starting.
- I like this idea, especially combined with talking with a lawyer. Thank you
This is one of the reasons I started a company (note I am outside the US). My B2B contracts stipulate that I retain all IP, and my customers get a royalty-free license in perpetuity. For some reason people seem quite OK with this in a B2B contract, but demanded ownership of 100% of my ideas as an employee. Since I do significant research in my own time and with my own equipment, that was unacceptable in my case as well!

I effectively subcontract myself via my company in lieu of employment. Makes it easy to have multiple employers too, and saves them a bunch of paperwork and accounting (employment contracts are a bit of a pain locally). Not a solution that works for everyone, but maybe worth thinking about in some fields (e.g. tech).
- As a freelancer I got so much more respect than I got as an employee.
  
  As a freelancer I come and go as I please, immediately have the ear of any c-level executive, and get paid a hell of a lot more. And just generally speaking, everyone in the company, all the way to the top, treats me like their superior.
  
  The only really bad part I found is that I went from actually doing tech most of the time... to doing tech some of the time. Now most of my effort is spent on business development, and maybe 20% of my time is spent chasing after people who don't pay on time. I'm lucky if I can spend 1/3 of my time doing actual tech stuff.
  
  ...of which half is probably writing documentation for some horrible thing that should not be, that only I will ever read. I don't mind doing this though. If I ever get a job to fix it again, I look like a pro and can charge a really fair rate :P
  
  That is really cool. I guess there is a big split between freelancer and contract employee.
- Thank you for sharing. It sounds like you have a great attitude and method.
  
  Eh, when I'm not raging about people who don't know what they want, when they want it, or what the budget is. Or don't pay on time.
  
  I try to keep that negativity offline though :)
I have signed several of these. If you do it on company time or with company resources, it's theirs. If you do it on your own time with your own stuff, it's yours.

You may or may not be shocked to learn how many "personal projects" get done when people are supposed to be doing the work they get paid for or with resources they are effectively stealing from their employer. This isn't some evil corporate attempt to steal your brilliant work. They are trying to make sure that when you are at work using their stuff you are doing your actual job.

If you have your own things you want to pitch as products you will be giving over the rights to that the minute you work on it on company time with company resources.

If your ideas are good, save money, quit, start a start up, and use your connections to make a good deal with them (sell it to them). Or wait until you are a vested shareholder.
- Important to read the contract fully, enlisting a lawyer to assist if needed. I have worked for Fortune 500s that made no distinction about time. I don’t think they took ownership, but it essentially said they had nearly the same rights as an owner would (perpetual licenses, ability to license it to others, etc).
  
  You could not enforce "everything you do is ours" in Canada. You cannot write a contract that overrides employment law. Seems crazy you could do that but maybe US legislation allows it. I can see this, especially in states that are more "pro employer".
- I am shocked to learn people would work on side projects at work.
  
  I won't know if my ideas are good until I try them, so I will be defensive until I can test in the market.
  
  Thank you
  
  You are probably very new to working in IT/programming if this shocks you and a clause like this is new to you.
  
  I would ask myself how much a regular salary is worth over the value of a "maybe" idea you are not committed to already.
  
  My personal advice is spend your time and energy honing your skills to increase your leverage with employers. When you are ready to take an idea to market you'll need to understand how businesses work, etc. You can learn that at work. Pay attention to everything.
Generally speaking, if you are developing things related to your employment position, your employer is going to have some kind of legal claim to what you're developing, even if you're doing it on your own time. It's it's not directly related to things that your company does, or your position within a company, then you're probably okay.

If I design advertising campaigns, and I come up with a novel way of making a low bore axis handgun (...that doesn't infringe on patents owned by Daniel Defense or Laugo) as a hobbyist machinist, then it is very unlikely that the advertising firm that I work for will own my firearm design. If, on the other hand, I come up with a novel form of marketing campaign on my own time that hasn't been previously conceptualized, then it is much more likely that the firm I work for will have a claim to that.

If you have real concerns about this, please consult with an IP and/or employment attorney in your state.
Email the idea to yourself or something before you start working. Then they can go sit and swivel as youll have it dated as work that exists before you started work with them.

I'm not a lawyer or anything.. But sounds legit to me
Talk to a lawyer, get everything you’ve already thought up documented with dates.

Read the contract carefully and don’t allow them to claim perpetual licenses to anything you’ve already come up with.
- I think you are right. I am working on writing things and developing them now in the hopes of having some details for the lawyer to write up.
An idea isn't a product to protect, you don't have to declare an idea that hasn't been made yet. When you get your new job, if you explore this idea on company time, they get rights. If you want to keep the rights, you'll need to explore the idea outside of company time. If and only if this idea already exists in some form of product AND you plan on using it at work, you'll need to declare it to your new employer, I've seen forms for that attached to letters of offer, if you don't see it there, ask. The company can refuse for that item though, meaning that if you continue developing that product during work hours, they have some rights to it. IANAL.
Chat GPT4 says:

It's wise to consult a lawyer for matters involving intellectual property (IP) rights, particularly when entering into an employment agreement that may affect ownership of your ideas. Here are some key concepts and steps you might consider:

Intellectual Property (IP) Assignment: This typically refers to a clause in employment contracts where an employee agrees to transfer the rights of creations related to the job to the employer. Understanding the scope of this clause is crucial.

Pre-existing Works: You should document and list any pre-existing ideas or projects you have developed before joining the company. These should be explicitly excluded from the IP assignment in your contract.

Scope of Work: Clarify with the employer the fields or subjects the IP assignment covers. If your ideas are outside this scope, they may not fall under the company's IP claim.

Invention Assignment Agreements: These are common in tech and creative industries and usually require employees to disclose any inventions made during their employment. Distinguishing between work-related and personal projects is essential here.

Confidentiality and Non-Disclosure Agreements (NDAs): These could also play a role in how your ideas are protected or disclosed.

Document Everything: Keep detailed records of your ideas, the development process, and the dates. This could be vital if there's ever a dispute about when and where the IP was created.

Future Ventures: If you plan to develop your ideas into products in the future, consider forming a legal entity (like an LLC) and assigning your IP to that entity.

Terms to Research: Look into "work made for hire," "non-compete clauses," "trade secrets," and "non-disclosure agreements."

Remember, the laws can vary significantly by jurisdiction, and the specifics of your situation can change the advice significantly, so professional legal counsel is always recommended.

You've viewed 43 comments.