this post was submitted on 25 Feb 2024
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129
How to protect Intellectual Property from new employer (midwest.social)
submitted 8 months ago* (last edited 8 months ago) by [email protected] to c/[email protected]
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Pretty sure I will be asking a lawyer, but I want to learn more words and concepts first.

A possible new job wants to own any intellectual property I create and wants me to declare anything I want to keep as my own. This seems normal in my industry as they will be paying me to do some thinking.

Issue is that I have a number of ideas I have been developing. I am going to float some of them as products in my own time, though this may be years from now. Most of these are outside the current market for the company as far as I know.

How is this typically handled? I presume I don't need to have copyrights or trademarks prior and can just list tentative titles.

I am also a little unclear on the spread between "intellectual property" and "an idea I am playing with".

Thoughts? Concepts to investigate?

Edit: I did Internet search this, but I have not found working keywords.

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[–] [email protected] 75 points 8 months ago (2 children)

NAL, but have heard of these. Amazon was really bad about it a few years ago.

General rule, anything you do on company time/devices/premises is theirs. That is enforceable for sure, and it's provable.

Anything you do in your own time is generally unenforceable, unless you still code/materials or something from them. Caveat being that it can't conflict with your work. i.e. if you work for Expedia and start a new travel company you may be in an enforceable grey area, "They stole company secrets to compete with us". However if you work for a game company and make your own game, you're probably fine.

Read your contract, know it upside down and sideways, that's going to be the guiding principal.

[–] [email protected] 51 points 8 months ago (1 children)

Anything you do in your own time is generally unenforceable

With the important caveat that your employment contract may include clauses that give them rights over that stuff anyway, and even if they're unenforceable you could still end up having to fight in court over it.

Definitely something to keep in mind when reading the contract over, and ideally get a lawyer to take a look. It can be expensive, but weigh that expense against the potential expense of what would happen if you get screwed over.

[–] [email protected] 11 points 8 months ago

Yeah that's the bit I remember when Amazon was launching their game studio. It was deep in the fine print that anything you built even on your own time was owned by them, and they got flamed pretty hard by it to remove it. Important to always check for that crap, it's usually unenforceable, but remember by unenforceable I mean "You're going up against your company's lawyers. You'd probably win, if you put up a ton of your own money to fight that the contract shouldn't be valid in court with your own high price lawyers"

[–] [email protected] 15 points 8 months ago

This is correct. Anything you make on company equipment, or on company time, is owned by the company.

You want to work on your own stuff, had to be off the clock and off company property.

[–] [email protected] 57 points 8 months ago (1 children)

I got my contract modified to exclude anything I do outside of work

[–] [email protected] 3 points 8 months ago

I did the same. Anything that I do on my own time on my own equipment is mine

[–] [email protected] 35 points 8 months ago (2 children)

I've tried to get several companies hr to explicitly say but have never gotten a clear answer. Like the other person said, if it's on company time with company resources it's theirs. If it's yours it's yours. Until it isn't. I just keep to myself, nobody needs to know what I'm working on besides myself or anyone I trust who I'm working with. The only reason you should even disclose any of these thing you might be working on is if there's already something they can take, not just an idea. Ideas can be stored securely in your brain until you need them.

[–] [email protected] 9 points 8 months ago

I just keep to myself, nobody needs to know what I'm working on besides myself

And for OP, this includes Lemmy

[–] [email protected] 2 points 8 months ago (1 children)

I don't think keeping it quite will work for me. I am going to start companies on a few of them.

[–] [email protected] 3 points 8 months ago

You need to form llcs for any of them before you're employed, then have a lawyer revise your employment contract to reflect the protections needed to retain those companies IP that you create during your employment.

Speaking from experience, employers want someone who will sell them their entire life. Good luck.

[–] [email protected] 30 points 8 months ago (1 children)

If there are any ideas you want to make sure you protect upfront, write them down & mail them to yourself.

Don’t open it when it comes back & you’ll have postmarked proof the idea was yours on the day you mailed the letter.

That’s what they taught us film school in the early 2000’s anyways.

[–] [email protected] 7 points 8 months ago

You have to send it certified mail. Unopened, the document is considered as old as the postmarking. Often called a poor man’s copyright.

[–] [email protected] 23 points 8 months ago (2 children)

I actually have a friend who's involved in a situation like this right now. He got laid off from his old job a few months back and while he was job hunting he started working on a project with a couple other friends that could be worth a fair bit of money. He's had job offers since then and he got a lawyer to write up a description of the project he's working on that could be inserted into those "I'm keeping the rights to this stuff" contract sections.

It's a bit different for him because it's stuff that he's actively working on right now, though. It sounds like your case might be simpler, if it's stuff you haven't done yet and don't plan to try working on while employed with this current employer I suspect you won't need to worry about it. Though of course, IANAL.

[–] [email protected] 7 points 8 months ago

That is great. Thank you are sharing. I was hoping the solution was that direct.

[–] [email protected] 5 points 8 months ago (1 children)

Is the former employer of your friend trying to claim ownership of the project after laying him off??

[–] [email protected] 14 points 8 months ago

No, that's not the concern here. He's getting job offers from new employers while he's midway through this personal project, and he wants to make sure the new employers don't have anything in their employment contracts that would end up grabbing it.

The old employers trying to claim it was also a concern, but that wasn't what OP was concerned about so I didn't mention it. He had a lawyer check over his old employment contract as well to make sure there wasn't a problem there. As long as he's not using proprietary tech retained from the old job (and he's not) there's no problem there.

[–] [email protected] 12 points 8 months ago (1 children)

You need to talk to a lawyer. The laws regarding this will vary by state, and a lawyer can read the contract and advise you accordingly.

[–] [email protected] 2 points 8 months ago

Thank you. That seems to be consensus.

[–] [email protected] 11 points 8 months ago (1 children)

I would imagine writing down all of your ideas and a brief description, having them notarized, and keeping them sealed away somewhere for safe keeping would cover your grounds pretty well, and doing it that route would mean you wouldn't have to disclose anything to someone who may have the idea to steal or "borrow" from any of your ideas.

It would be pretty hard for a company to claim you came up with something on their time when you have a notarized dated copy proving you had it before starting.

[–] [email protected] 6 points 8 months ago

I like this idea, especially combined with talking with a lawyer. Thank you

[–] [email protected] 11 points 8 months ago (2 children)

This is one of the reasons I started a company (note I am outside the US). My B2B contracts stipulate that I retain all IP, and my customers get a royalty-free license in perpetuity. For some reason people seem quite OK with this in a B2B contract, but demanded ownership of 100% of my ideas as an employee. Since I do significant research in my own time and with my own equipment, that was unacceptable in my case as well!

I effectively subcontract myself via my company in lieu of employment. Makes it easy to have multiple employers too, and saves them a bunch of paperwork and accounting (employment contracts are a bit of a pain locally). Not a solution that works for everyone, but maybe worth thinking about in some fields (e.g. tech).

[–] [email protected] 6 points 8 months ago (2 children)

As a freelancer I got so much more respect than I got as an employee.

As a freelancer I come and go as I please, immediately have the ear of any c-level executive, and get paid a hell of a lot more. And just generally speaking, everyone in the company, all the way to the top, treats me like their superior.

[–] [email protected] 1 points 8 months ago

The only really bad part I found is that I went from actually doing tech most of the time... to doing tech some of the time. Now most of my effort is spent on business development, and maybe 20% of my time is spent chasing after people who don't pay on time. I'm lucky if I can spend 1/3 of my time doing actual tech stuff.

...of which half is probably writing documentation for some horrible thing that should not be, that only I will ever read. I don't mind doing this though. If I ever get a job to fix it again, I look like a pro and can charge a really fair rate :P

[–] [email protected] 1 points 8 months ago

That is really cool. I guess there is a big split between freelancer and contract employee.

[–] [email protected] 1 points 8 months ago (1 children)

Thank you for sharing. It sounds like you have a great attitude and method.

[–] [email protected] 2 points 8 months ago (1 children)

Eh, when I'm not raging about people who don't know what they want, when they want it, or what the budget is. Or don't pay on time.

I try to keep that negativity offline though :)

[–] [email protected] 2 points 8 months ago (1 children)

Iβ€˜d actually like to hear more about this. Self employed for 10 yrs now. Used to run a company with a lot of folks, more going for subcontractor atm. Are you in IT as well? What are your experiences with international contracts so far? Any suggestions you want to share?

[–] [email protected] 3 points 8 months ago (2 children)

Yeah, I'm in IT, although half the time it feels like I'm not doing IT at all. More like management consulting for companies that have shortcomings in tech leadership? I want to be doing IT, but more often than not, they're just blaming the tech to save face because it's less confrontational than making people take responsibility (including themselves). So they hire a tech expert, who is doomed to fail because the problem is human in nature. I want to make money though, so I just do whatever I think will solve their problem, even if it means taking on a leadership role as a contractor. I often end up as a sort of discount, part-time, drop-in CTO with no stock options or title. There are worse things to do for a living, although frankly it makes no sense at all with the compensation and incentives that the actual CTOs typically receive. Sometimes I've made good money doing this though.

International contracts? Well, my experience is that they are basically unenforceable, because I can't afford to sue someone in another country (e.g. the USA). The cost is just so much higher than the contract amount, and it would cripple my ability to do work for years by taking up all my mental effort. So I make sure to charge an aggressive enough deposit that if they default, I'm not in a mess. I've had billion dollar companies screw me out of 300$ (a lot of money for me at the time, haha) for no reason except that they could.

Before I learned that, foreign companies defaulted on their payments regularly. Actually, they still do, but I charge much bigger deposits to the point where it's still worth it for me. The harsh truth is that Americans (not to pick on them specifically, they're just the most common employer -- it's exactly the same with Chinese companies) don't come to my country to do things well, they come here to do things cheaply -- and not paying me is cheaper than paying me. I've tried all combinations of delivering before or after payment is received -- the only thing that solved anything was hefty deposits. This guaranteed I could deliver work to my standards -- anything less and I'm crippling my ability to win future work my delivering less than I'm able to.

A lot of my conversations end with "I can begin work once the deposit is received". I grant people about an hour or two of my time in free consulting / meetings before that point ("qualifying the lead"). This was hard for me to learn because I fundamentally want to help people with whatever problem they are having -- but I found that with anything more than this, nearly 100% of my time was spent in meetings or doing unpaid consulting for people that had no intention of ever hiring me -- what they really wanted was for me to write a full proposal for their project so they can hand it off to someone else less experienced, or internal staff. It's a shitty thing to do, but sadly very common.

Let's see, what else... Learn accounting -- GnuCash is glorious, screw Intuit. Convert monthly expenses to yearly if you can -- time is money and juggling invoices every month costs a lot of time. Also you can negotiate better rates for e.g. office rent if you pay a year in advance. Shop around for an accountant / lawyer and so on at the start, because when you're busy, you don't need the hassle of switching providers. Usually other freelancers in your area can recommend someone. At the start, pay them for some templated contracts set up with he terms you like, then just change the scope/timeline/budget/invoicing sections as needed but leave the rest the same.

I usually expect to spend 1/3 of my time chasing new business, 1/3 of my time doing administrivia, and 1/3 of my time "actually working". The hardest part is always chasing new business -- coding is the easy part. I bill accordingly, because all those hours need to be paid for.

I keep a reliable outsourcing partner handy and also a network of other freelancers. For those times I don't know how to do something, I subcontract them in, manage the client, and charge a fee. The fee is not small, because again, finding clients is the hard part. Incidentally, the way to get things done cheaply is to reach out to freelancers directly with a well-defined scope, timeline, and budget -- you're saving them that 1/3 of their time doing business development, this is what you pocket when subcontracting to them (and overall will thank you for it -- they get to focus more on the fun work while you manage client expectations).

Also, try to line up some regular clients as a side hustle before switching to full freelancer mode. Even if this is at a lower rate than you want to make. Not needing to scramble against starvation, especially at the start when you're probably going to suck at winning contracts, means you have some freedom to choose who you can work with, which is super important. Bad clients will wreck you, one way or another. I was wise enough to do this a little, but did not do this enough, and it nearly sunk me. The first 3 years were acutely distressing, I had to feed the business before feeding myself. Many horror stories from that era of my life.

Finally, my most limiting resource is something I refer to as "the space in my head", the number of ideas I can hold concurrently -- methods on how to do some specific thing without needing to look it up, the details of some client's specific problem, how to use a piece of client internal software, etc. If someone is not paying me, I strictly allocate them none of this. I write it down and never think about it again unless I'm paid. It's analogous to RAM. Another way to put is is that the most valuable thing you have is focus. So you need to be very strict about ordering priorities. This was hard for me, because I might be tempted to work on interesting new projects instead of things that people have already paid me to do.

Writing about these things online is an experiment for me. It helps me organize and synthesize what I've learned. Also at some point I realized I was dropping below some acceptable threshold of human contact outside of work. I'm some sort of mercenary science hermit :P

Hope this helps! Good luck!

[–] [email protected] 2 points 8 months ago

Holy christmas! One of the rate occasions I actually have to save a comment. Thank you very much for your suggestions.

Some of this is familiar to me as Iβ€˜m self employed for a long time but a ton is new or more differentiated than I knew. Cant thank you enough.

Especially the mental aspects are very familiar. Its a lonely business and the idea of screwing other businesses over is still baffling to me (as in getting screwed over by them just so they can make a buck for their employer who wont even thank them for it).

From my days forming a company I remember how distressing it was to start out. Iβ€˜m totally someone who overdoes the preparation and I think thats what saved me back then. One thing I did trip over multiple times actually is betrayal. Friends, peers, business partners who scheem behind your back. I always thought this only happens in movies but the real world is actually worse.

If you like, Iβ€˜d love to stay in contact. Iβ€˜m a sysadmin first and coding is only a hobby for me so if I get jobs in coding Iβ€˜d probably ask someone to do it. Besides, I like to meet folks with similar trajectory.

Feel free to hit me up in dms or on matrix @haui:matrix.giftedmc.com

[–] [email protected] 1 points 8 months ago

I’ve had billion dollar companies screw me out of 300$ (a lot of money for me at the time, haha) for no reason except that they could.

I can confirm, I used to work for one. When the budget got tight, all contracts would be paid on the due date and never before (net90 will get paid on the 90 day.) Orders that arrived on the dock would be sent back. And it was too everyone, not a judgement of who could sue or who was also a customer.

I fully encourage large deposits and payment terms that you want.

Great advice. Thank you!!

[–] [email protected] 9 points 8 months ago

Generally speaking, if you are developing things related to your employment position, your employer is going to have some kind of legal claim to what you're developing, even if you're doing it on your own time. It's it's not directly related to things that your company does, or your position within a company, then you're probably okay.

If I design advertising campaigns, and I come up with a novel way of making a low bore axis handgun (...that doesn't infringe on patents owned by Daniel Defense or Laugo) as a hobbyist machinist, then it is very unlikely that the advertising firm that I work for will own my firearm design. If, on the other hand, I come up with a novel form of marketing campaign on my own time that hasn't been previously conceptualized, then it is much more likely that the firm I work for will have a claim to that.

If you have real concerns about this, please consult with an IP and/or employment attorney in your state.

[–] [email protected] 9 points 8 months ago* (last edited 8 months ago) (2 children)

I have signed several of these. If you do it on company time or with company resources, it's theirs. If you do it on your own time with your own stuff, it's yours.

You may or may not be shocked to learn how many "personal projects" get done when people are supposed to be doing the work they get paid for or with resources they are effectively stealing from their employer. This isn't some evil corporate attempt to steal your brilliant work. They are trying to make sure that when you are at work using their stuff you are doing your actual job.

If you have your own things you want to pitch as products you will be giving over the rights to that the minute you work on it on company time with company resources.

If your ideas are good, save money, quit, start a start up, and use your connections to make a good deal with them (sell it to them). Or wait until you are a vested shareholder.

[–] [email protected] 7 points 8 months ago* (last edited 8 months ago) (1 children)

Important to read the contract fully, enlisting a lawyer to assist if needed. I have worked for Fortune 500s that made no distinction about time. I don’t think they took ownership, but it essentially said they had nearly the same rights as an owner would (perpetual licenses, ability to license it to others, etc).

[–] [email protected] 4 points 8 months ago

You could not enforce "everything you do is ours" in Canada. You cannot write a contract that overrides employment law. Seems crazy you could do that but maybe US legislation allows it. I can see this, especially in states that are more "pro employer".

[–] [email protected] 3 points 8 months ago (1 children)

I am shocked to learn people would work on side projects at work.

I won't know if my ideas are good until I try them, so I will be defensive until I can test in the market.

Thank you

[–] [email protected] 3 points 8 months ago (1 children)

You are probably very new to working in IT/programming if this shocks you and a clause like this is new to you.

I would ask myself how much a regular salary is worth over the value of a "maybe" idea you are not committed to already.

My personal advice is spend your time and energy honing your skills to increase your leverage with employers. When you are ready to take an idea to market you'll need to understand how businesses work, etc. You can learn that at work. Pay attention to everything.

[–] [email protected] 2 points 8 months ago (1 children)

I am shocked that people would endanger their personal projects by doing them at work. It often results in a quick firing. (At least I'm places I have been before.)

New job has the kindest version of the clause I have seen, which is why it is interesting.

[–] [email protected] 2 points 8 months ago

I really think people think no one will notice. If you are stealing time and resources from your employer, you probably lack respect for them or have an inflated sense of your importance or expertise.

[–] [email protected] 8 points 8 months ago* (last edited 8 months ago)

Email the idea to yourself or something before you start working. Then they can go sit and swivel as youll have it dated as work that exists before you started work with them.

I'm not a lawyer or anything.. But sounds legit to me

[–] [email protected] 3 points 8 months ago

An idea isn't a product to protect, you don't have to declare an idea that hasn't been made yet. When you get your new job, if you explore this idea on company time, they get rights. If you want to keep the rights, you'll need to explore the idea outside of company time. If and only if this idea already exists in some form of product AND you plan on using it at work, you'll need to declare it to your new employer, I've seen forms for that attached to letters of offer, if you don't see it there, ask. The company can refuse for that item though, meaning that if you continue developing that product during work hours, they have some rights to it. IANAL.

[–] [email protected] 3 points 8 months ago (1 children)

Talk to a lawyer, get everything you’ve already thought up documented with dates.

Read the contract carefully and don’t allow them to claim perpetual licenses to anything you’ve already come up with.

[–] [email protected] 3 points 8 months ago

I think you are right. I am working on writing things and developing them now in the hopes of having some details for the lawyer to write up.