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What is a proprietary structrural engineering method?

What is a proprietary structrural engineering method?

What is a proprietary structrural engineering method?

(OP)
I recently quit working for a client that uses modified shipping containers as the structural "skeleton" for various structures.  As a sub-contractor, I developed FEM models, designed a million different details, produced construction documents and provided construction administration for this now successful start up for over 3 years.  I requested release from a non compete non disclosure agreement, they refused, so I quit, which starts a one year clock ticking until I am "allowed" to design buildings with containers again, which is fine, I need a break.  To the point though, for the life of me, I can't figure out what it is that I did that could really be considered "proprietary".  Nothing was patented, to my knowledge.  These guys seem to think that I possess some big secret.  Anyone out there ever been in a similar situation.  If I design a connection for someone as a sub-contractor, do they own that specific connection design forever, if they don't patent it.  Even patents expire.   

RE: What is a proprietary structrural engineering method?

Anything produced while in the employ of someone can be considered "proprietary" by them.  Doesn't matter what it is, if it was produced with their resources (including your paid time), it technically belongs to them, unless you have some contractual agreement to share intellectual property...which it doesn't appear that you have.

RE: What is a proprietary structrural engineering method?

(OP)
I think the difference may be the subcontractor position.  I was never considered an employee.  The only resources they did provide was payment for services.  I developed all of my methods, details, etc. independently, other than being paid.

RE: What is a proprietary structrural engineering method?

This is a good question for a patent or worker's rights attorney. You cannot lose the knowledge you gained, but a certain amount if not all of those FEMs, CAD details, etc., ie your work product, may be owned by them. Some contracts say you must actually destroy these documents or files, and provide copies to the company you have the contract with. If you want to use that info down the road, it'd be good to know where you stand legally.

On a side note, I am very interested in this concept of reusing storage containers, I think you have some very valuable knowledge. I have thought this is a great future business idea and the applications are huge. I'd be interested in what you plan on doing down the road...

RE: What is a proprietary structrural engineering method?

(OP)
a2mfk - Again, they were a client, I was not an employee, so I think things are little different.  If I design a house for someone, the details are still mine to use, as well as the FEM and other calculations.  I rarely if ever provide more than the actual drawing (plus calcs to submit to a building department when required).  I completely understand if I was an employee, that the files aren't mine, that's how I saw it before I became self employed.  

On your side note:  Yes, I have at least 3 patentable ideas that I'll be developing over the next year.  Not many people understand how weak these things are after you let an architect hack one up.  It takes a lot of reinforcing if you don't take advantage of them correctly.

RE: What is a proprietary structrural engineering method?

vato- I gotchya the first time, I did contract work for several years and read my contract with that company a few times. Its my understanding that non-competes are difficult to enforce, as judges/juries like to side on the labor side of things. I'd wait out your year and develop your game plan, or consult an attorney either way especially if you have some bright ideas up your sleeve you don't need legal challenges down the road...

On the side note- if you'd like to keep in touch, I am not trying to step on your toes, but this area is something I have been keen on exploring for several years. I was hoping to some day soon get a big enough piece of land where I could do something with a couple of them for a shed/garage/etc as a way to familiarize myself with them. I have seen websites out there so I know its not a brand new idea, but it seems like an area with great potential.

With all that said, if you'd like to keep in touch about this type of work and discuss it off forum, I can get you my email address or vice versa, you cannot do it on here directly for security/spam/whatever reasons. Big brother!

Best wishes either way!

RE: What is a proprietary structrural engineering method?

It would depend, as one might expect with any subcontract, what the parameters of the statement of work were.  

Unless you can demonstrate that you had existing designs that were proprietary to you and modified for them, they dictated what you were to design, so they own the designs as you delivered them.

TTFN

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RE: What is a proprietary structrural engineering method?

The term used for this type of thing is 'intellectual property' and is a very grey area in most countries.

In order to progress as a professional you have to learn from your past experiences and apply this knowledge in future endeavours.

On the flip side, if the concept was the clients one and the details were your then they should have some rights to protect their investment.

A difficult one that really should be discussed with a lawyer.

 

RE: What is a proprietary structrural engineering method?

(OP)
First, thanks to all for their thoughts on this.  I may need to repost in the engineering practices forum.  I'm still of the mindset that the difference here is the fact that they were a client, and I was absolutely not in any way considered an employee.  If I design an awesome railing connection for a client's home, then I think I have every right to use it again.  If I use my knowledge to figure out how to keep a bunch of containers in the air, all connections and analysis coming from my desk, then what is the difference?  As far as I know, nothing that I did for them has been used to obtain a patent.  How do you justify a standard detail that you develop if it really belongs to the first client that you designed it for?

RE: What is a proprietary structrural engineering method?

One limit of patent law IS the requirement to "release" specific information (via the patent application itself!) to the public - and one's competitors.   (See Watt's patent battles in "The Most Powerful Idea in the World" by William Rosen, for example.)

That's been true since patents began in the mid-1750's in England right at the beginning of the Industrial Revolution.  And, to fight it, even before 1800 some inventors did NOT patent their ideas or improvements, but simply kept them secret from their competitors.  And, today, many companies still do the same.    

Look at the "competitive advantage" words used just above:

"On a side note, I am very interested in this concept of reusing storage containers, I think you have some very valuable knowledge. I have thought this is a great future business idea and the applications are huge. I'd be interested in what you plan on doing down the road... "   

See?  Your ideas have been (immediately!) judged to have merit.  And that merit is in the small details of making it work: How to attach power and light cables from unit to unit.  What (and where!) to attach doors and windows to, and how to cross-connect containers for passage of people and tools and equipment.  How to seal windows and air conditioners.  

That competitive advantage is what the none-compete rules are written for.   Morally, you'd be required to follow the agreement - because of the paragraph above.

RE: What is a proprietary structrural engineering method?

a> not every intellectual property is patented; not having a patent does not void the ownership

b> "If I use my knowledge to figure out how to keep a bunch of containers in the air, all connections and analysis coming from my desk, then what is the difference?"  You were paid to do a job.  You delivered construction documents, so they "own" what was done specifically for them.

c> Being a contractor does not make you a non-employee.  Companies routinely circumvent tax laws by claiming that they only have contractors.  If you do not have a contract that states your relationship clearly as an entity with intellectual property rights, then you operated as if you were an employee.  

d> A simple test is if you had a binding nondisclosure agreement with the company to protect your property rights.  

e> Another test is whether your statement of work and contract specified limitations on how the company was allowed to use your intellectual property, and who owns what.

TTFN

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RE: What is a proprietary structrural engineering method?

1. Call your lawyer.

2. You can probably go back to work any time you want.  The company will not want to fight it.  If they do, by the time they do "discovery" and file motions, etc, etc - the year will be over.

RE: What is a proprietary structrural engineering method?

(OP)
Very interesting.  I should have charged more.  I'm not trying to stir up a hornets nest with these guys, although that may have already happened.  I plan to abide by the non disclosure agreement, just trying to define the difference between structural engineering skills and proprietary information.  Creating a load path with shims through a bunch of hacked up stacked up containers doesn't sound like it would be proprietary, just common sense, or at least basic structural engineering design ability.  On the flip side, how much right does a client have to replicate a solution that you provide for them?  House designs are usually a one time deal, not to be repeated without permission.  Why wouldn't the same apply to structural engineering designs of connections?  Again, I'm coming from a non-employee (they are a client) position.  I hope there is big difference.   

RE: What is a proprietary structrural engineering method?

What did your Agreement/Contract say and what did the noncompete/nondisclosure say?

All of my contracts say that the documents I create remain my copyrighted material and that my client is granted the right to use my material for a single project only.  Hopefully you didn't have a contract that gave them ownership of your instruments of service.

I would expect that the nondisclosure/noncompete addressed their intelectual property, not yours.  And I doubt they could claim the mere idea of using shipping containers as structures would hold up as intelectual property.  Plenty of other people are doing this as well.

RE: What is a proprietary structrural engineering method?

(OP)
I wrote an engagement letter stating that I would provide electronic files, not prints, of drawings.
The non-disclosure agreement, which I also wrote as this was a start up company at the time, is specific to proprietary information/trade secrets.

I'm having difficulty believing that everything that I did for them is now a trade secret.  I was never given any proprietary information concerning any "secrets".  I have agreed to release files specific to the trade secrets when, of course, I get paid (another story).  I have requested that they inform me of what is proprietary, so I can get them the info.  They claim anything and everything that I did. They have all the drawings and building department required calculations for each job, just like any other client.  Seems like they have enough.  I'm not kidding, if there is secret, I don't know what it is.

My lawyer isn't well versed here, so I'm likely going to consult another.


 

RE: What is a proprietary structrural engineering method?

Yeppers.  Get another lawyer.   Quickly.   (Or at least, well before your next contract starts.  Is signed.)    

RE: What is a proprietary structrural engineering method?

Be careful how far you take this.  IMHO reputation is everything in the engineering business.  

Were you developing designs for container structures prior to you contract with this customer?  Where your solutions or ideas specifically related to applying your engineering knowledge to the issues of this client?  Did you advise your client that you intended to use discussion and development of their project as future proprietary property.  

Engineering is involved in the development on nearly every product.  Rarely is it implied that the engineer is expected to receive proprietary consideration for improvements they provide to another's idea.  An engineer may have not thought of the wheel, but we darn sure made it better, without continuous recognition.   I have used several contractors over the years.  I have appreciated most of their input and allowed their involvement in all relevant project communications.  In only one case has a contractor considered their work above the overall project.  This contractor contacted my clients directly and offered services excluding our participation and taking credit for significant improvements in the overall designs.  Several of my clients contacted me immediately.  I terminated this contractor and continue to have long term relationships with my clients.  The contractor bounced from job to job for roughly two years, and no longer practices engineering.  Not by my direct action, but purely as a result of his reputation.  

Just be careful.  Sometimes the knowledge gained is the only long term payment.  If you what to develop you own proprietary design or intellectual concept, then dream up your own wheel.   

http://www.FerrellEngineering.com

RE: What is a proprietary structrural engineering method?

Regarding your non-compete agreement...

How many design firms or contractors are working with shipping containers?  It would seem that your limitation is specifically regarding the area of design you were providing.  You cannot develop a competing product or work directly for their competitor.   That leaves an awful lot of other options.   

http://www.FerrellEngineering.com

RE: What is a proprietary structrural engineering method?

(OP)
I haven't threatened to use any information against the company.  I just tried to negotiate out of the non disclosure/non compete and to continue working with them.  That was not acceptable so I quit. Per the agreement, I can develop my own wheels in a year, and get credit for it.  That was not possible with this client.  They have threatened to mess with my license(s) and back charge me for the problems that I caused them when I quit providing services.

It's as if I was not allowed to quit, for any reason really.  I didn't have a two week notice clause anywhere.

But, the answer to my question still evades me.  What exactly is a proprietary engineering method?  If I had strengthened a load path with a TS column in a stack of containers, then am I never ever allowed to strengthen a stack of containers with a TS column?  Or do I need to use a different member than the one I used previously?  Where, exactly is the line drawn?  What I'm getting at here is that I provided basic, structural engineering services for a client, none of which were for what I see as "trade secret" stuff.  It's what we all do, engineer it.  Design it as simply and efficiently as you can.  These were all unique custom design jobs, not development of a "system" for using containers.  I really want to understand exactly what I did that is truly proprietary so I can honor my agreement with them and with anyone else I may work for or collaborate with.

And, if you are still reading, I thank you sincerely for your attention and/or contribution to this discussion.   

RE: What is a proprietary structrural engineering method?

The best example I can think of proprietary engineering, are several seismic steel connection details.  The connections were developed, researched, and tested privately.  If these details are selected, the EOR forwards the design and identifies the bracing or moment connection locations requiring design.  The proprietary design company fills in the blanks.  This is part of the owners costs.

Some examples are Side-Plate and Corebrace.   I have read some of their literature but have no personal experience.  In my experience these are expensive alternatives for special conditions.

Good luck with you situation.   

http://www.FerrellEngineering.com

RE: What is a proprietary structrural engineering method?

As I mentioned earlier, I think your limit is in providing similar services to a competitor.  If tomorrow you are designing Walmarts, there can be no conflict of interest or competition with your previous "employer".  I don't think you can solicit business from their competitors or develop your own competitive product.   I think the proprietary products I mentioned earlier are very different than the services you provided.  It sounds like your relationship with your previous employer is soring.  Some effort to patch this relationship may be beneficial.  A happy ex-client is much less likely to pursue a non-compete claim.  Be patient, 1 year is a very short requirement.  My employment contract with key employes requires a 5 year non-complete.  It is my experience that these clauses have to provide mutual benefit.  In our case a bonus is included in the contract.  I think others have mentioned that independent contractors have certain advantages to the client.  Limited liability, no benefits, unemployment, disability, etc.   But you may consider other advantages, your own boss, some control of your schedule and priorities, and some ability to negotiate your rates.  But, overall the professional and ethical responsibilities are the same, whether salaried or contracted.   Commitment to schedules, completing assignments, and reasonable notifications are expected equally regardless of the terms.  If you are not meeting your clients expectations the non-compete may be their simplest way of causing you problems.  If they have an attorney on staff, it will always cost you more to prove your innocence.  Threading your license requires substantial effort to solicit a board review.  In 20 years I have  never seem anyone's license revoked.  In a few cases fines and temporary suspensions have followed what could have been considered gross negligence.  

IMHO repairing your relationship with your client will go a long way.  Again good luck.  

http://www.FerrellEngineering.com

RE: What is a proprietary structrural engineering method?

I am no lawyer but:

Are the designs you provided the same as any reasoble engineer would do it in the same situatio. If yes the I cannot see how it is proprietary information.

Is the idea of using the shipping containers yours or your clients. If it is your clients idea then I can see how they could justify the idea as proprietary information.

I cannot see how a non compete could be used to prevent you practicing engineering and excercising your engineering knowledge.

But as I said I am not a lawyer.

That said, you would have a very volatile business if it was based purely on one singe unoriginal idea. Use the year to expand your spread of projects and clientelle and this will give you a good background upon which to explore the possibilities of your own ideas.

RE: What is a proprietary structrural engineering method?

IMO, nothing you did could be considered proprietary. Heck, we are a jury of your peers in the business and nobody has yet to say this is proprietary, and I would not see a mediator/jury seeing it any other way. Legally I know these things are very hard to prove and most attorneys don't touch them unless they are pretty clear cut or involve a lot of money.

Connect's example was one I was thinking of when I first read your post. I think to prove something is patentable or even proprietary there has to a level of uniqueness and sophistication above and beyond what a typical solution may be. Otherwise, Connect would have patented every moment and unique connection he has ever designed. His side plate example shows you what is probably required to get a structural detail patented, it is way above and beyond your standard connection and there was presumably a lot of testing involved as you could not rely on standard calcs. Well even AISC's shear connection design relies on significant testing, but they do not trademark their work thank goodness...

I have designed all kinds of connections that I thought were just awesome, but truth is they have all been used before. Give several structural engineers the same problem and you'll probably get the same 2-3 details. Reinforcing these containers using HSS, plates, extra welds, and developing these details are a normal part of that type of business and probably similar solutions that other engineers are using for other companies. We all have typical details in our libraries for situations we encounter all of the time, and they are all probably pretty similar.

Now you cannot go down the street to company B who is doing the same thing and divulge everything you learned, at least not for a year (non-disclosure AND non-compete violation). In that unique business I don't even see that being an issue, there probably is no company B down the street. I would also think legally any details in CAD, any actual calcs or FEA models are THEIR property, they paid you for that work product and they own it. That does not mean you have to submit to a Men in Black mind eraser device, but you'd have to recreate that physical work (over this coming year, you have the time). I did not forget the details all my previous companies used, I simply recreated them and calc'd them out for my own. This is how structural engineering as a profession works.

NOW- I will dream up an example. This company had you develop some type of connection system that to everyone's knowledge had never been done before, especially not by your competitors. You do calcs, FEA, etc., and then you guys go in the lab and test this design to prove it works. Now you have something proprietary and patentable I would think, and this would be completely off limits. Now if they did not patent it, and one year went by, and you got clearance from an attorney, then....

Like everyone else said, consult an attorney, tread lightly for a year, and use it as pencil sharpening and idea time...  I think the non-compete portion of the contract is what keeps you from doing this type of work for a year more than the non-disclosure.



 

RE: What is a proprietary structrural engineering method?

(OP)
Thanks again to all.
I can't fully express my appreciation for everyone's sincere advice on this.  
a2mfk-Yes, that is exactly how I have been feeling.  I did come up with some really incredible solutions to some really funky problems, but it was straight up structural engineering.  And I'm sure if the problem were given to someone else, they would have ended up with a similar solution.  There is a chance that they have pursued patents on some of my ideas, but doubtful.  The proprietary engineering method for them was to hire some guy on the internet and claim his work as there own, I'm not joking, and they will miss me.
I have no problems taking a break from containers for a year.  As I mentioned earlier, I put the "great" ideas in my back pocket as I saw this day coming.  And it takes me about half an hour to construct an FEM from scratch for a container, so no biggy there.
I'm sure not happy about giving them any files beyond what they already have, but if I do eventually get paid, then I suppose that will happen.  They have a long history of paying when they want if at all, which makes their attitude that much more annoying.  I actually requested the noncomp/nondisclose be dropped when they were 8 months behind on invoices and they blew up like yosemite sam, so I waited another year and a half till they paid it off at their leisure.  I hope my interactions with future clients aren't this dramatic.  Thanks again to all for the time on this.



 

RE: What is a proprietary structrural engineering method?

vato,

ouch that had to hurt the finances!

I would think that the length of time to get paid could be a cause to claim that the contract between you was broken. but once again - not a lawyer.

The only thing I would say is dont wait that long to get paid next time.

In a years time I really hope you drive them out of business.

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