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Assignment of Intellectual Property Clause
2

Assignment of Intellectual Property Clause

Assignment of Intellectual Property Clause

(OP)
These contact clauses for the assignment of all property rights to the company have always bugged me. Although, I am completely willing to accept that if I do something with company time or resources, they have every right to own my work. But today I'm reading a clause which states that the exclusive ownership by the company 'whether or not the development involved the use of Company time, material, etc.' Is that even legal? Oh yeah, and this fine clause extends for one year after my contract expires.

Is there a graceful way to keep my rights to things like blog posts, random drawings and projects done at home, moonlighting jobs, ideas conceived and in progress but not actualized? I might not sell many of these things, but it's fun to try. And I don't really want to have to 'promptly disclose' every little thing that I do outside of work hours.

I guess my only options are 1) strike the clause (or clarify it) and risk losing the job. or 2) live with it and follow the rules to the utmost until they tell me to stop bothering them with every little thing I do.
Replies continue below

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RE: Assignment of Intellectual Property Clause

When I see that particular wording, I strike the clause. If they say "this is the language that the lawyers require" I say "Sorry, find someone else". You know, every single time this has happened they've called back with a new contract without that language. Usually within a few minutes. They've obviously had two versions ready and figure that if someone will sign up for slave labor they'll let them.

Bottom line is never sign a contract that you can't live with.

David Simpson, PE
MuleShoe Engineering

"Belief" is the acceptance of an hypotheses in the absence of data.
"Prejudice" is having an opinion not supported by the preponderance of the data.
"Knowledge" is only found through the accumulation and analysis of data.

RE: Assignment of Intellectual Property Clause

When we got bought just under 2 years ago the updated NDA/contract we all had to sign had similar wording.

Many of us, fortunately including our local HR director, had issue and so he went back to the new corporates and got clarification that it didn't apply to ideas out side of work, not relating to work and not done on work resources etc.

Bad thing was they didn't actually change the wording of the NDA, and it had a clause about no changes or addendum etc.

Posting guidelines FAQ731-376: Eng-Tips.com Forum Policies http://eng-tips.com/market.cfm? (probably not aimed specifically at you)
What is Engineering anyway: FAQ1088-1484: In layman terms, what is "engineering"?

RE: Assignment of Intellectual Property Clause

Strike it or move on. As zdas04 noted, "slave labor".

RE: Assignment of Intellectual Property Clause

(OP)
I'm currently thinking that I will suggest replacing the text with Section 2870 of the California Labor Code.
(Link to Labor Code) http://www.leginfo.ca.gov/cgi-bin/displaycode?sect...

Quote ((a) Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any of his or her rights in an invention to his or her employer shall not apply to an invention that the employee developed entirely on his or her own time without using the employer's equipment, supplies, facilities, or trade secret information except for those inventions that either: (1) Relate at the time of conception or reduction to practice of the invention to the employer's business, or actual or demonstrably anticipated research or development of the employer; or (2) Result from any work performed by the employee for the employer.)


I've been reading some things on standard Employment Agreements, and it looks like this company put all the harshest optional wording into their boilerplate.

RE: Assignment of Intellectual Property Clause

Star for you scjames & zdas. I needed that.
I've also been troubled with those standard employment agreements and Intellectual Property agreements that dictate all my subatomic particles now belong to the company. I needed a succint response to counter the lazy patent lawyer verbiage and HR Weasel threat of no signature, no job. Now I've got the ammunition to form my own addendum to any contract. Or walk away if need be.

My experience with the whole Intellectual Property game over the last few years has led me to believe it is a lawyer's game, if not an outright sham. I've been bewildered to see CompanyA secure patent rights on GizmoA. CompanyB will take the essence of GizmoA, give one of the bolts an extra 1/4-turn, and call it GizmoB. Then say it is different from GizmoA and get a patent disclosure on GizmoB. I try to have faith in the system and believe that there is merit in how this is done, but it seems so...so...deceptive and sleazy. And clearly, my independent thoughts & actions, within reasonable bounds, are my own.

TygerDawg
Blue Technik LLC
Virtuoso Robotics Engineering
www.bluetechnik.com

RE: Assignment of Intellectual Property Clause

I applied for a patent on a device a couple of years ago. Last month my lawyer-spending went over $40k. It is a "provisional patent" now and this time next year it will probably be a real patent. I hired a guy that seems to be really good and the patent application ended up much broader than I expected. Still if it catches on someone will replace the top flange with a weld cap and call it new. That is OK, if 20% of the requests for information on it pan out I'll have more money than I ever dreamed possible (it is not hard to impress a kid that grew up in the poorest county in America) and I'll sell the patent rights for an obscene amount of money and let someone else deal with the copycats.

David Simpson, PE
MuleShoe Engineering

"Belief" is the acceptance of an hypotheses in the absence of data.
"Prejudice" is having an opinion not supported by the preponderance of the data.
"Knowledge" is only found through the accumulation and analysis of data.

RE: Assignment of Intellectual Property Clause

Muleshoe -

Not to be impertinent - I think you need a new lawyer - most patents are in the $10-15,000 range - usually... in my experience.

RE: Assignment of Intellectual Property Clause

That includes a royalty contract and a Colombian lawyer translating it and updating it for their IP statutes (not inexpensive). I feel like I've gotten value for my money.

David Simpson, PE
MuleShoe Engineering

"Belief" is the acceptance of an hypotheses in the absence of data.
"Prejudice" is having an opinion not supported by the preponderance of the data.
"Knowledge" is only found through the accumulation and analysis of data.

RE: Assignment of Intellectual Property Clause

(OP)
By no means is this a 100% device. The company (a small company, btw) sent back my revisions. Their new revisions are just a reiteration of their original clause(s). Arguably the new revisions are even more restrictive.

RE: Assignment of Intellectual Property Clause

In some circumstances, the notion if "intellectual property" is one BIG assumption...

Mike McCann
MMC Engineering
http://mmcengineering.tripod.com

RE: Assignment of Intellectual Property Clause

(OP)
I don't understand your meaning, msquared48. At this point, I'm not really trying to protect my 'Intellectual Property', its worth much less than the job (if anything). I'm more concerned with a former employer suing me for taking a position at a new company, or that same employer suing me for my hobbies. All of which would fall under the per-view of their contract.

Although as I ask friends about this, the wording in the contract is apparently very common. I guess most people just ignore the contract and go about their daily lives. Not very healthy.

RE: Assignment of Intellectual Property Clause

When I've seen people unwilling to negotiate, then I don't. I just send them a "Thanks for thinking of me, I must pass on this project" e-mail. The trail of "good deals" is approximately infinite. If someone insists on owning you then you might just want to wait for the next train.

David Simpson, PE
MuleShoe Engineering

"Belief" is the acceptance of an hypotheses in the absence of data.
"Prejudice" is having an opinion not supported by the preponderance of the data.
"Knowledge" is only found through the accumulation and analysis of data.

RE: Assignment of Intellectual Property Clause

It would also be prudent to review the contract with a lawyer to determine what elements of it are enforceable in your jurisdiction. When I came on board at my current company, I signed a non-compete/non-disclosure agreement. It's very broadly written and even has the language that says, "if a judge deems X is too broad, then try this."

Well, there is no written agreement on what my duties are and, since it is a small office, I do a lot of things outside of a typical project manager scope. Oh sure, the owner is always going to get around to completing the position agreements and revising the structure of each position -- but that would take away from his July in San Diego. I am now finalizing my contractor's license and starting my own installation company. I know the owner is going to claim I am competing with him so I had a good labor lawyer look at it. She explained very directly that, if you are a registered contractor and he is in material sales, you are not in violation (there are some things it would be prudent for me to stay away from for a couple years though). Besides, in my locality, these employment clauses are often unenforceable. You can sign on to slave labor, as someone phrased it, but they may not be able to enforce it even with your signature on the line.

Obviously I have no intention of sharing his pricing lists or any kind of damaging information, so that $300 consultation gave me some real piece of mind. So that would be my recommendation.

Composite Strengthening Systems, LLC
Turnkey Design and Installation Services
Coming Fall 2012: COMPOSITE-STRENGTHENING.COM

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