Help me keep my IP

March 23, 2009 6:12 PM

I have some personal IP and I don't want the large corporation I'm about to be employed by to own it, what are my options?

I have written some pretty interesting iPhone apps, and have a variety of prototypes of ideas that I have implemented. I want to continue to work on these even after I am employed, and as such I don't want the large corporation to own my IP.

My initial idea includes setting up a LLC, but I'm unsure if this is the best option. Currently I'm not making any money on my apps, but in the near future I do plan on selling my applications on the app store and perhaps doing some other coding that could result in pay.

I know that YANML, and very likely YANAL, but i'm just looking for what paths I should investigate. Thanks.

posted by Quazie to law & government (11 comments total)

A “work made for hire” is—
(1) a work prepared by an employee within the scope of his or her employment; or
(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.

As long as you don't work on it FOR YOUR EMPLOYER OR UNDER A CONTRACT, it remains yours. If the lines start to blur, get an attorney.
posted by Inspector.Gadget at 6:17 PM on March 23

Most of the places that I've worked that have had an invention clause simply require that you identify your inventions in writing when you sign your employment contract. An awful lot depends on the state you're working in (California has very different laws than New York), so if this is important to you, plunk down a couple hundred bucks for a local lawyer to review it with you.
posted by jenkinsEar at 6:22 PM on March 23

Look carefully at the contract they want you to sign. If the language makes you uncomfortable (some corporations try to claim anything you invent at all during the time you work for them, even if it's on your own time) you can object to the clause and/or consult a lawyer. That's the main situation that could arise that might give them rights over your IP.
posted by katemonster at 6:25 PM on March 23

katemonster is correct. The obituary pages are full of stories of folks who invented insanely ubiquitous things, and got a $50 bonus and a hearty handshake for their efforts. "John Doe invented Formica, please send remembrances to the Home for Indigent Engineers."

My grandfather had a patent for a fastening device that was used in many, many buildings built in the 70's and 80's. He was glad to do it, as it was part of his work for the company he worked at, and it's not like he was going to build a factory and produce them himself. But if he'd wanted to, he couldn't have.

Read the contract and negotiate terms. You don't have to specify *what* you're talking about, just that you have varied interests outside of work and you want to protect yourself and draw a bright line between work-work and personal-work. It's really in both of your best interests to hammer this out at the outset, so that there are no misunderstandings on either side.

The good news is that IP is more protected now than it has been, and inventors/creators generally have better control over their IP.
posted by gjc at 6:58 PM on March 23

Cross out the entire inventions clause in the employment agreement. Typical boiler-plate clauses will be onerous for someone like you, saying that the company owns everything you create while you are employed by them. You would probably want to fine-tune that a bit.
posted by rhizome at 7:14 PM on March 23

1. Just working for a company doesn't give them rights over IP you have coming in.
2. Do not, under any circumstances, do any work on (or support for) any of your apps while you're on the clock or at the office. This might seem like huge pain in the ass (especially not answering support emails) but the more clear a line you can draw between your personal projects and your new employment the better off you're going to be.
3. If you do #2, the only way the new company can get ahold of your IP is if you contract it to them. Be very, very careful of things secreted away in non-disclosure and non-compete agreements.

For example: I worked for a company that wanted me to sign a non-compete which basically said that any copyrighted or patented work that I produced during the time I was employed and up to a year afterward was theirs unless I could prove that it wasn't. When I pointed the clause out, and noted that it was ridiculous, they had no problem scratching it.

All that said, you would really be well-served to spend a few hundred bucks and have a lawyer look over any documents before you sign them to make sure there's nothing you miss that might cause you a headache down the line.
posted by toomuchpete at 8:45 PM on March 23

You can't just scratch out elements of a contract and turn it in. For a contract to be valid, both parties have to agree. And I'm pretty sure an HR wonk stuffing it into your folder doesn't count as agreement on their part.
posted by gjc at 8:53 PM on March 23

some corporations try to claim anything you invent at all during the time you work for them, even if it's on your own time

(Emphasis added) Please do note this aspect - this is a common contract clause for software engineers. If your projects are a big enough deal that you have specific concerns of this nature, you should definitely be talking to an attorney with expertise in both employment law and IP law. He or she should vet any contract you sign with the new employer, and negotiate revisions if you can afford that.

You should also be very up front with your employer about the items you are concerned about; if they are hiring you to work on something very different anyway, they probably weren't even thinking of taking these things away from you and would not mind putting some carve-outs in the employment contract. But if you sign some boilerplate agreement without discussing this stuff, you could run into trouble later on.
posted by rkent at 9:01 PM on March 23

I used to work for RSA Security (before they were purchased by EMC). They had a very reasonable IP policy for employees that was part of the standard contracts you signed. It basically said that the company owned it if: 1) you made it on company equipment, or 2) on company time, or 3) in furtherance of company objectives. In other words, if you did it at work, for work, or during work hours, it was theirs. If not, it was yours.

That's the baseline for me, and should be for everyone.
posted by fatbird at 9:21 PM on March 23

One of my jobs is at a place where the standard employment contract says that any inventions, even those prior to employment, become property of the corporation unless itemized in the attached list.... and there's a page at the end with lots of blank lines and a comment saying that additional pages can be attached, etc.

It was explained to me that this was to short-circuit any possible "but I did this before" arguments coming up later, since such things are often hard to prove. So they force you to list them, specifically in advance, and if they're not there, then you have a hard time claiming it was previous work.

It make me uncomfortable at first, but after thinking it through from all sides I decided that it made sense. I suggest the same here: happily sign over your inventions, but then attach a list of exceptions that is precise and complete, and then everyone wins and feels safe.
posted by rokusan at 11:22 PM on March 23

You can't just scratch out elements of a contract and turn it in. For a contract to be valid, both parties have to agree. And I'm pretty sure an HR wonk stuffing it into your folder doesn't count as agreement on their part.

Of course you can. You just have them sign it as well, and initial next to your scratch-outs. This works just fine.
posted by odinsdream at 7:20 AM on March 24