IP contract law with out of hours work

MajesticDonkey

Hi all,

I'm working for a company that was recently acquired by another, and our new contracts have the following clause which neither myself nor some of my co-workers feel great about:

Any discovery or invention or secret process or improvement in procedure or other IPR made or discovered by you (whether or not in conjunction with any other person or persons) while in the service of the Company in connection with or in any way affecting or relating to the business of any Group Company or capable of being used or adapted for use therein or in connection therewith shall forthwith be disclosed to such company and shall immediately vest in the Company (or such other person, persons or company as the Company may nominate) absolutely.

To me this says if I come up with something worth millions, the company, if they have use for it, can claim rights to it - and if it's worth millions, they will go and come up with a use just so they can claim rights to it.

We have been told this is standard in the US, but we are not working in the US.

Opinions? Anyone have references to Irish laws/statutes covering this area?

Manach

It is correct this is fairly standard in US but also in this side of the Atlantic. However my understanding (offhand based on an O'Reilly book on IPR) is that the IP has to be tied to the work being done by the employee. So if the person invents the better mousetrap and say the company is an IT one, then the IPR vests with the individual.

Uno my Uno.

I'd consider that pretty standard, if you invent something related to your work while working for the company, the company owns it. That might seem harsh but it's designed to stop you from using knowledge and experience or resources gained from the company to invent something else which could benefit the company.

MajesticDonkey

Uno my Uno. wrote: »

I'd consider that pretty standard, if you invent something related to your work while working for the company, the company owns it. That might seem harsh but it's designed to stop you from using knowledge and experience or resources gained from the company to invent something else which could benefit the company.

Yes, we understand that. For reference, we are a software development company for a specific niche.

Our issue is more that if one of us comes up with, for example, a new social network that takes off in a big way (we can all dream), the company will say "we already have a social network [which they do], but this one's better, let's use it", and they claim rights to it.

Any discovery or invention or secret process or improvement in procedure or other IPR made or discovered by you (whether or not in conjunction with any other person or persons) while in the service of the Company in connection with or in any way affecting or relating to the business of any Group Company or capable of being used or adapted for use therein or in connection therewith shall forthwith be disclosed to such company and shall immediately vest in the Company (or such other person, persons or company as the Company may nominate) absolutely.

From what I can see, the bold wording covers what I mentioned above.

Uno my Uno.

MajesticDonkey wrote: »

Yes, we understand that. For reference, we are a software development company for a specific niche.

Our issue is more that if one of us comes up with, for example, a new social network that takes off in a big way (we can all dream), the company will say "we already have a social network [which they do], but this one's better, let's use it", and they claim rights to it.


From what I can see, the bold wording covers what I mentioned above.

Yep I'd agree with that interpratatation of it. They are giving a broad definition of what can be considered related to your work. Presumably they have a few reasons for doing this, firstly it's a catch all that protects their interests as well as acquiring any new IP. Secondly they probably don't want you working on other projects outside of your work, they want you dedicate your talents to the work you do for them.

That is clearly objectionable to you but it's kind of the way it works, you can't really expect to work for a company and essentially compete against them when you're off the clock. Which is what you would be doing in your social network example.

MajesticDonkey

Uno my Uno. wrote: »

Which is what you would be doing in your social network example.

Not really though - the company only uses a social network (Yammer) for it's employees to communicate with each other. It's actual area of business is completely unrelated. "Completely", as in, a million miles. This is my point - it's easy for the company to come up with a way to make "it" useful if they want.

My opinion is that anything I do in my spare time that is not related or useful to the direct line of business of the company is none of the company's business. I mean, it's not as if I'm paid for the time I spend at home in the evenings.

MajesticDonkey

While we're on the subject, what would be the story with this clause and doing contract work outside of work hours?

Uno my Uno.

MajesticDonkey wrote: »

Not really though - the company only uses a social network (Yammer) for it's employees to communicate with each other. It's actual area of business is completely unrelated. "Completely", as in, a million miles. This is my point - it's easy for the company to come up with a way to make "it" useful if they want.

My opinion is that anything I do in my spare time that is not related or useful to the direct line of business of the company is none of the company's business. I mean, it's not as if I'm paid for the time I spend at home in the evenings.

That is your opinion and that is all well and good but it would seem (and none of this is in any way legal advice) that your employer has a different opinion on the matter and they want to make that a point of contractual agreement between you. That leaves a you a few options;

1) leave your job and find an employer who has a similar opinion to you,

2) Stop working on out of hours projects,

3) Express your opinion to your employer and seek to have the contract amended. Given the standard nature of the clause and the contract you may not be successful in this.

MajesticDonkey wrote: »

While we're on the subject, what would be the story with this clause and doing contract work outside of work hours?

You would need to check your contract but if it is anything like most employment contracts I have seen I would think that out of hours contract work, AKA moonlighting, is expressly prohibited in your contract and may be grounds for disciplinary procedure or even dismissal.

If you have concerns about your contract or the terms in it you should seek legal advice from your solicitor.

MajesticDonkey

Thanks for your help

arthur daly

Nothing stopping a "friend" using your idea anyway if it's worth millions

arthur daly

Nothing stopping a "friend" using your idea anyway if it's worth millions

Uno my Uno.

arthur daly wrote: »

Nothing stopping a "friend" using your idea anyway if it's worth millions

Well if his employers find out about it they will probably take legal action, especially if there is millions involved!