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Employment contract - intellectual property/copyright

Posted: Wed Jul 15, 2015 6:52 pm
by UKDeveloper99
Hello, I work in the app industry, I've started working for a new employer but I'm worried about them claiming ownership to my other ideas/inventions if I developed them outside the workplace but while still employed by the company. Let's assume I make the next Snapchat and I make 10 billion and quit my job, they claim ownership and sue me for damages or whatever.

I discussed these concerns with them and they were happy to let me retain the rights to my work as long as it was outside work hours etc and I gave them a chance to obtain the IP for the invention/idea by way of a contract/profit share agreement if they liked it and wanted to participate in it's development.

However there is nothing about what we discussed in my employment contract and I'm a little worried about the implications of what they have written in this section on Intellectual Property and copyrights. It looks like I sign over pretty much every intellectual property I own now or will own.

Could someone help me understand what all this means?
"Intellectual property" means all interest and title in and rights to improvements, inventions, processes, systems, designs, production practices, software code, patents, copyrights, trademarks, design rights, technical information and know-how devised, written, made, suggested or found by you at any time whether or not prior to the date of this agreement and whether solely or jointly and whether or not relating to the business or operations of MYCOMPANY from time to time or any work done by you for MYCOMPANY.

You now assign (subject to s.40 of the Patents Act 1977) to MYCOMPANY all and any interest, title and rights you have or may have in the intellectual property and shall promptly provide such information and assistance (without charge to but at the expense of MYCOMPANY) to obtain, maintain and enforce protection for the intellectual property anywhere in the world including executing any documents necessary to vest in MYCOMPANY all and any rights and title to the intellectual property which it is now agreed shall be and remain the property of MYCOMPANY.

You now assign with full title guarantee all present and future copyright in all your rights, title and interest in and to all material written, created or devised by you relating to the business or operations of MYCOMPANY from time to time or any work done by you for MYCOMPANY and all rights of action for damages for infringement of such copyright.

You now irrevocably and unconditionally waive any and all moral rights under the Copyrights, Designs and Patents Act 1988 in and to any material above.

You now appoint MYCOMPANY as your attorney to act in your name and on your behalf to execute all deeds and documents as may be required above.

The Employee agrees:

to give the Employer full written details of all Employment Inventions which relate to or are capable of being used in the business of the Employer promptly on their creation;
at the Employer's request and in any event on the termination of his employment to give to the Employer all originals and copies of correspondence, documents, papers and records on all media which record or relate to any of the Employment IPRs;
to maintain confidentiality of all internal business communication;
not to develop (further), release or sell (or any other use) any ideas, codes, concepts or any other IPR;
not to attempt to register any Employment IPR nor patent any Employment Invention unless requested to do so by the Employer; and
to keep confidential each Employment Invention unless the Employer has consented in writing to its disclosure by the Employee.

Posted: Thu Jul 16, 2015 6:00 am
by AndyJ
Hi developer,
I think you have every reason to be concerned about that contract. It certainly doesn't fit with the verbal agreement you may have had from the company. Because it effectively and quite legally, overrides the provisions in the law on copyright etc, this is not really a copyright matter, but one of employment law.
Clearly it is their standard form of contract and understandably it is weighted in favour of the employer. However I am not sure a court would go so far as to say that the conditions in it are unfair, thus making them unenforcible. Clearly the company is entitled to protect those ideas and know-how which you create or have access to at work, but which you then exploit in your own time at home, or which you could take with you if you leave to join another company. I imagine there may well be a non-compete clause in the contract too, to cover the latter situation. If so, and depending on the wording of it, that may amount to restraint of trade, because it could prevent you continuing to work as a coder in virtually all parts of the software industry.
Since the contract would effectively determine the outcome of any dispute, and you presumably have no evidence to substantiate the verbal agreement you say you got, you really need to go back and get the terms of the verbal agreement put in writing. However this needs to be done carefully (ideally by a solicitor) if it is to redress the balance between your reasonable rights and those of the company. What's more the company may well be unwilling to agree to reducing the verbal agreement to writing, in case all their employees might ask for the same thing. If you do meet resistance, you should consult an employment lawyer for more specific advice. You could start with Citizens Advice.

Posted: Thu Jul 16, 2015 12:32 pm
by Nick Cooper
It certainly seems needlessly restrictive, especially the wording of "at any time whether or not prior to the date..." (which seems to claw back anything you did before joining the company!) and "whether or not relating to the business or operations of MYCOMPANY..." I can see that employers might be wary of an employee developing something "privately" on company equipment, in your own time or not (hard to police), but effectively seeking to claim ownership of something you do in your own time, elsewhere, and on non-company equipment is wholely unreasonable.


Posted: Thu Jul 16, 2015 2:04 pm
by UKDeveloper99
Thank you for your replies, I've now resolved this with my employer. Thanks for the advice.