What is a proprietary structrural engineering method?

[vato]

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.

 

[Ron]

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.

 

[vato]

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.

 

[a2mfk]

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...

 

[vato]

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.

 

[a2mfk]

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!

 

[IRstuff]

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

FAQ731-376
Chinese prisoner wins Nobel Peace Prize

 

[csd72]

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.

 

[vato]

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?

 

[racookpe1978]

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.

 

[IRstuff]

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

FAQ731-376
Chinese prisoner wins Nobel Peace Prize

 

[MiketheEngineer]

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.

 

[vato]

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.

 

[gte447f]

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.

 

[vato]

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.

 

[racookpe1978]

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

 

[connectegr]

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

 

[connectegr]

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

 

[vato]

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.

 

[connectegr]

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