I'm guessing you're being deliberately obtuse here. You were completely free to do with your work as you please, and you "pleased" to sell your work to a company in exchange for some consideration. If you don't want IP transfer, or first-refusal fixed price patent transfer, then don't sign that employment contract. I had them negotiated out of my last agreement, and I'm free to spend my personal time creating whatever I want, knowing the rights to it will be owned entirely by me.
Previous company was essentially "We own everything you create whether during work or not" I think my contract was worded in a way that meant technically speaking any ideas I had while under their employment belong to them too. I'm not sure how they'd have enforced it, but was unwilling to challenge it.
Major part of my reasoning to leave. I left with a fair bit of leverage due to an unrelated matter so managed to secure all the rights to my side project on the way out.
Current job - don't compete directly with us and don't let it get in the way of your work and we're cool with whatever.
I negotiated IP assignment out of my employment contract before taking my job. I wouldn't take a job that tried to lay claim to my work outside of work.
Please don't make comments like this, particularly in threads where OP is probably misunderstanding their legal situation and about to be extremely disappointed.
It is absolutely routine for employment contracts for software developers to transfer the corresponding IP to the employer. It's the main asset the employee is being hired to create!
It is common in fair and reasonable employment contracts for the standard for what is covered to be something like anything done on work time, using work resources, or related to work activities. The legalese varies from place to place, but if the employment contract includes wording like "in the course of your employment" then it probably means something along these lines, again depending on your local laws.
Some employers do try to include much more wide-ranging grabs, potentially any IP created by a salaried employee during the period of their employment. I normally recommend against signing any contract that includes these, not least because it says something about what type of employer you're dealing with. It's true that the situation is less clear in this case, because in some jurisdictions such terms might be considered overly broad and so not stand up to challenge, but you really need a local lawyer to advise you about this because the rules vary widely from place to place. In any case, since OP has told us that the project in question is directly related to what they do at work, this aspect probably isn't relevant to today's discussion.
OP, I'm sorry to be the bearer of bad news, but unless there are important details you've omitted or your employment contract is unusually liberal, you probably don't have much of a leg to stand on here. It's quite likely that your employer has actually owned all of the relevant IP from day one.
That would probably mean you wouldn't be entitled to any sort of compensation for it. (This isn't to say that your employer might not offer something to maintain good will and keep you on-side, but that's a different matter.)
More than that, it would potentially also mean you never had any legal right to open source it yourself, if the copyright was never yours so you never had any power to license it. That in turn could mean anyone redistributing it has been infringing your employer's copyright all along and the employer could even sue them. The employer could also take the whole project back closed source, or do anything else legal they want to do with it. (Again, this isn't to say they will actually do any of these things, but the employer being nicer than the worst case isn't a problem.)
On top of all of that, if the project is in any way in competition with what you do at work, you may have violated other conditions of your employment, which as with so much of this stuff may end up changing nothing or could have quite profound implications.
Short version: You do need a local lawyer who works in this field, right now. They will help you to understand your real situation, which no-one here can do properly. They may well advise you to simply hand everything over, and perhaps to seek some sort of written confirmation from the employer that they don't consider you to have violated any other aspects of your employment contract and the matter is then settled. If your employer is into open source and sees the value in the community you've built, you might get away with that. On the other hand, if they're sufficiently aware and litigious to go after your project in the first place, things could be much worse, and then you definitely want to have proper advice before you do or say anything else.
While this seems like quite a bucket of cold water was dropped on your head, I will tell the assembled hackers here in hn that these sorts of clauses are not just present in your contracts but in the laws that govern your employment as well (except for a small number of countries and jurisdictions)
At my work, we've taken explicit steps to allow people to open source, and most legal departments in larger companies can often respond (and sometimes even positively) to requests to retain copyright, but most of the laws say that programming work done on your own time, even on your own resources, very simply belongs to your primary employer.
I had a friend lose his house after the company he worked for decided they didn't like his new consulting business that was only a modicum similar to the job he left. It was punitive and petty, but they managed to nearly ruin him. This was in northern virginia, whose laws are only slightly less midievil than most.
So while much of the advice here is to 'get out' and 'run', the question that is not answered is 'to where'. A more reasonable response is to ask yourself if you are okay with this kind of arrangement , and if not, resign and make sure your next job doesn't have this kind of language in the contract and that you have an affirmative recognition of the kind of ip deal you want with the company.
This, btw, includes people in california, who's laws allow a loophole for employers the size of a truck in its anti-competition language.
It is always worth your time to understand what is going on around intellectual property in your jurisdiction, your contract and your personal ethics because as the OP saw, it can be difficult to resolve after the fact.
Every employer I've had during the last 15 years or so have boilerplate language in their employment agreements asserting ownership of all IP I create while at work and at home, using company equipment or my own equipment, commercial or free, as long as it is remotely related to the company's past, present, or future business. And when your company is huge, they can and will argue that anything might be potential future business.
And yes, I've tried to push back on those, and so far no employer has been willing to negotiate.
I was asked to sign a contract like that and I had my current employer change it so that it didn't include those lines/words.
I can't indemnify someone against patent lawsuits. I can't know whether the code I am writing that is coming out of my head is in a patent somewhere. Not only that, but the contract asked me to assign to the company any and all ideas/thoughts/previous work that may or may NOT be relevant to their line of business and that by signing I had agreed I had done so (not even to the best of my knowledge, so if I forgot to give them a text file that I wrote years ago with a great idea then I'd technically be in violation).
Under no circumstances am I going to sign over any part of my work prior to the employment contract, nor am I going to sign over work that is completed on my own personal equipment outside of company time that isn't for the company.
To me it just felt like they were overreaching, and the guy I was discussing this with told me that wasn't their intention and that I should just go ahead and sign it because they would never hold it against me, and I told him no, I told him to go fix it, then maybe I'd sign it.
Employer contracts are concerned that you are attempting to take company proprietary information and repackage it on your own time for sale. This sort of behavior clearly falls into 'inventions'.
However, most of the contracts I've seen have a clause which states that the invention must be related to the business of the company. If you work in the games industry and make games on your own time for sale, your employer might take issue with that.
If you work at a games company and run a real estate business on the side, who cares? Similarly, if you work at a games company and write real estate software, they're still not likely to care.
The issue arises:
- where the customer you are getting money from is the same customer (potential customer) of your current employer.
- where the IP in your side project has potential business value to your current employer.
If in doubt, you simply tell your employer up front and get it in writing (email) that it's o.k. I've done this in the past, and the HR department usually will defer the decision to your Manager, who has to make a determination if the work you're doing has potential cross-cutting business concerns. The bigger issue (from an employer standpoint) is that you are not devoting 100% effort to your current employer.
So as long as:
- you make it clear that there are no customer overlaps
- there is no IP that the company would ever be interested in
- that this is done own your own time (and off-premises)
This is the truth right here. I've never signed an IP assignment agreement that applied outside of work hours and company equipment in my entire career. I've simply refused to do so, and made it a point of negotiation. If there's a company I really wanted to work for, at times I gave up some salary for this flexibility, but generally speaking it wasn't even an issue. Overly broad employment contracts are common-place in the US, because most people never challenge it. It's very much an "implication" situation, because of the power dynamic between employee and employer. Take the power back, read contracts, and don't sign if you disagree. There's always room to negotiate.
I think it's perfectly reasonable to say things I create during work hours, or in the office, or with company equipment belong to the company. On the flip-side, once you are no longer "at work" (whatever that means in your case) and on your own equipment, that is none of the company's business whatsoever. If you agree to it though, that's on you.
I also have a contract like that. They don't sue you, but everything I produce is intellectual property of my employer.
Not very useful when working on open source, which is why I don't.
I argued about this before signing, but this has been in every contract I have ever read and when I argue about this they will always say it is standard practice to include.
Well in the contract with my current employer, it pretty much states that every IP I create during my employment belongs to my employer.
So if I wanted to create a project that I own, I would have to terminate my contract first. This is especially annoying being a Student and having many ideas all the time. Oh well.
The employer in question rolled out a new contract a while back. Different from the one I had signed many years ago when I first started.
The new contract did have a section that stated essentially that anything an employee produces, on or off business hours, in or out of business locations, is owned by the employer.
I flat out refused to sign this and there was apparently no requirement for me to sign it. It was just presented to me digitally because a process had been started in their systems and signing that contract was part of the process.
If I'm forced to sign it I will request a new contract without that section in it. Because even before I had my own business I was writing open source code for open source projects that we use and rely on. So it's impossible for my employer to own that code.
The IP clause is in effect regardless of your intent to make money. So when the contract says “everything you create while employed here belongs to us” that’s the deal.
If you want to own something you create, then you either have to already have a contract that allows you to retain ownership under certain very clear circumstances or you need to ask the company in advance and get it in writing.
(When you negotiate employment you should consider the additional compensation you require in exchange for granting them exclusive ownership over everything you create.)
To my utter shame, I must admit that when I accepted the job offer at my current place of employment, I merely skimmed over the 'Intellectual Property Rights' and 'Copyrights' section of contract. Last year I learned to produce music. I sometimes publish some of it online, free and open source. I happened to re-read my contract for an unrelated reason when these clauses caught my eye, and they looked scary. I compared this contract with some other offer letters I had received in the past, and it seems that this is a common practice.
Does this mean the company can technically claim IP right/Copyright on anything I create, even if it's not a software that competes with them?
> And as far as I know, both state of PA and US law permit a person to sign away the copywrite on any work they wish to
They do, but not until it exists. You can't sign away work until you've done it, unless it fits the work-for-hire definition.
Now, you can write a contract agreeing to transfer the IP afterward, but then you have to actually perform that transfer, and if you don't you can get sued for breach of contract, but not for infringement.
It's possible that there's case-law interpreting this type of contract to imply a commitment to transfer IP, but I don't think it's very likely.
The standard employment contract in us tech is basically: if you do it on company time, or use company property, equipment, or anything paid for by the company it belongs to them - you would almost certainly be in breach of contract if you refused to disclose.
Now even if you didn’t use any company resources, most contracts provide at the very least the right for your company to use any IP you develop, even in your off time, even without any of their resources. Your contract in all likelihood would give them actual ownership of the IP.
You could choose not to tell them about this IP, and I believe you would be fine, as long as you never used or published it - even after termination of employment - because not being required to disclose the IP does not change ownership - it belongs to the company, even if the company does not know about it.
Source: going over job offers+contracts with a lawyer
I believe you've misinterpreted my post. The issue is not whether I was paid for my work (I was a full time employee), but rather that to continue my employment, I, along with everyone else at the company, was asked to sign an overly broad Invention Assignment and IP agreement. Hope that clarifies things.
Some of it is covered in the article; for example I once had a prospect want me to sign a web dev firm want a non-complete which said I wouldn't work in any industry they work in. I believe every client I've had before / after would classify. I'm not going to sign away my right to take on clients.
I've seen IP ownership clauses that say the client owns everything I create, whether or not it was done for them. These clauses are written in such a way that the client could claim ownership of work I did for other clients, my blog posts, podcasts, books I've written, and even things that have nothing to do with tech, such as songs I've written and/or recorded.
I try to make such IP transfer clauses as specific to the work I do for the client as possible.
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