Personal liability for proprietary rights infringement

cassos123

Hi,
I have been offered a permanent job as a design engineer in Ireland. I am currently living abroad.


In my contract, it is stated that everything I will create will belong to the company... fine.

but it is also stated that I will be liable if there is any case of infringement due to my future work (could be a process or a product). Is it legal ?

I mean how could I be liable if I am not the owner of the product but the company, and that I do not make money from the product ?

Here is the paragraph in question:
"You warrant and represent that none of the Intellectual Property Rights or the exercise of them will infringe any intellectual property rights of which a third party is the proprietor including, in particular but without limitation, any patents, copyrights, registered designs, moral rights or rights of confidence. You agree to indemnify the Company against any and all liability, loss, damage, costs and expenses which the Company or a third party may incur or suffer whether direct or consequential (including but without limitation any economic loss or other loss of profits, business or goodwill) as a result of any dispute or contractual, tortious or other claims or proceedings brought against the Company by a third party alleging infringement of its intellectual property rights by reason of the use or exploitation of any Intellectual Property, conceived, originated, made or developed by you"

thanks in advance for your comments.

Cassos

BizzyC

No knowledge of the design industry here, but that seems ok to me.

1.Anything you create while employed is property of the firm - standard
2.You cant go around stealing IP of others and presenting it as your own work because you think you're protected by #1, it's up to you to work within the confines of IP law.

cassos123

Design engineer is a position you can find in the semiconductor industry.

so according to you, it means that even without my knowledge that there is a risk of infringement, I am still reliable of the risks (i.e I am supposed to know all the patents in the world which is the full time job of a patent lawyer), but I do not get any benefice from the sale of the product as I am not the owner. So basically, it is better for me to limit my creativity or to enhance a product, as the only outcome for me is a risk to lose everything on a infringement law case that I could not even afford to defend in court. well, not for me.

Cassos

Irish_Elect_Eng

OP.

It is my understanding of this clause that the purpose is to protect the new employer from claims from your previous employers resulting from you using IP gained when you were employed by them.

For example, if your new employer were to ask you to design a new memory IC and you dropped in a chunk of a DRAM controller that that you had designed for a previous company then you would be liable, because you knowingly stole the IP.

In the case of a newly developed IC which you designed in good faith, where you can provide the intermediate work-products and evidence of due-diligence searches, it would be the responsibility of the company to perform the relevant patent searches etc.

This is a boiler-plate contract clause.

Stheno

I have had this clause in a few contracts, and as per the previous poster the same logic applied.

cassos123

ok, I understand this. But in the section I have copied above, I understand that it is for any infringements, not only from patents my previous employers. Which in itself would be rather irrelevant as I am from academia.

Stheno

cassos123 wrote: »

ok, I understand this. But in the section I have copied above, I understand that it is for any infringements, not only from patents my previous employers. Which in itself would be rather irrelevant as I am from academia.

I'm a consultant not a designer, it's basically a clause protecting my employer from anything illegal I do which impacts on them from an ip point of view.

That said I'm a contractor and have liability insurance as well as part of my contract.

It's a very standard clause in a lot of relevant contracts, essentially they are saying if you screw up and cause the company or a client to suffer harm of loss, you're liable.

cassos123

Thanks for this input Stheno. I understand that the company wants to protect istelf, but I will not have any insurance. As a consultant you know, that if a company attacks me for infringement I will not have the possibility to defend myself, just because the cost to do it. A lot of companies accept to pay the patent Troll companies, just because the cost to go in court is too high. So what could I do if it happens to me ?

Basically, for me the risk is too high. What would be the point to work if one has the risk to lose everything without any benefice to outweigh the risk ?

Anyway, after sharing my point of view with the company, they decided to remove this contentious sub-section. So it is all good now for me

Cassos