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Intellectual Property



Boyce
10/7/2004 5:36:16 AM


I work for a company that was merged with an even larger company this
year. Employees are now required to sign an agreement "as a condition
of employment" with the new company that includes a very troublesome
intellectual property clause.
The contract uses the words "and/or" with the / symbol to indicate
that anything created with company resources or with company owned
intellectual property or while the employee is employed by the
company will belong to the company. Further it indicates that all
intellectual property that the employee may own will belong to the
company and that the employee must surrender all rights to any
intellectual property at the company's request.
I've been reassured that the company does not want rights to
intellectual property that I have that is not company related. I
want to continue to have the right to create new intellectual
property that isn't company related (and doesn't use company
resources or company owned intellectual property...etc) without
having to worry about my rights to retain ownership of that
intellectual property.
I live in Texas but I understand that the contract for California
employees has an exclusion for that sort of thing.
My questions are:
Does the use of the "and/or" in the contract mean that the contract
is binding if only one of the stated conditions is met? (I'm employed
by the company but don't meet any of the other conditions.)
Can a company claim intellectual property that is created
independently by an hourly employee that isn't related to the
company? (I do tech support but develop software as a hobby which is
completely unrelated to anything I do for the company.)
Would signing this contract potentially cause me to face legal issues
as I develop software completely unrelated to the company? (If one of
my software programs proves very lucrative will they have sufficient
grounds to bring a successful suit against me?)
Would signing this contract keep me from being able to contribute to
GPL (think GNU/Linux) software? (It is important to me that I be able
to contribute to GPL software without worry that anything I
contribute might be owned by my employer and thus impossible for me
to donate.)
Your comments are appreciated, your legal expertise is begged.
 
 
"David Martel"
10/7/2004 11:54:36 AM


Boyce,
You need to get the company to agree in writing that they are not and
will not take an interest in your "hobby" software.
My questions are:
Does the use of the "and/or" in the contract mean that the contract
is binding if only one of the stated conditions is met? (I'm employed
by the company but don't meet any of the other conditions.)
Yes, that is exactly what and/or means in this context
Can a company claim intellectual property that is created
independently by an hourly employee that isn't related to the
company? (I do tech support but develop software as a hobby which is
completely unrelated to anything I do for the company.)
No, since the company has told you no already. But you would be wise to get
this in writing and read this carefully
Would signing this contract potentially cause me to face legal issues
as I develop software completely unrelated to the company? (If one of
my software programs proves very lucrative will they have sufficient
grounds to bring a successful suit against me?)
Probably not since they have agreed verbally that they have no interest in
work that is unrelated to your job.
Would signing this contract keep me from being able to contribute to
GPL (think GNU/Linux) software? (It is important to me that I be able
to contribute to GPL software without worry that anything I
contribute might be owned by my employer and thus impossible for me
to donate.)
See the above comments.
Your comments are appreciated, your legal expertise is begged.
If this issue is really important then discuss it with your attorney. The
advice of internet strangers will be general, not specific. And these
strangers will have opinions but may not have any expertise.
Good luck,
Dave M.
 
 
"clintonG"
10/7/2004 9:04:31 PM


I and others involved with software development need competent
lawyers who hold computer science degrees and are focused on
intellectual property, copyright, patent and trademark law.
--
<%= Clinton Gallagher, "Twice the Results -- Half the Cost"
Architectural & e-Business Consulting -- Software Development
NET csgallagher@REMOVETHISTEXTmetromilwaukee.com
URL http://www.metromilwaukee.com/clintongallagher/


"David Martel" <marte005@earthlink.net> wrote in message
news:08a9d.7044$Vm1.3026@newsread3.news.atl.earthlink.net...

Boyce,
You need to get the company to agree in writing that they are not and
will not take an interest in your "hobby" software.
Yes, that is exactly what and/or means in this context
No, since the company has told you no already. But you would be wise to
get
this in writing and read this carefully
Probably not since they have agreed verbally that they have no interest in
work that is unrelated to your job.
See the above comments.
If this issue is really important then discuss it with your attorney. The
advice of internet strangers will be general, not specific. And these
strangers will have opinions but may not have any expertise.
Good luck,
Dave M.
 
 
"I approved this message"
10/8/2004 7:00:57 AM


The customary thing to do is list the IP that you currently own or are
working on separately.
If you truly develop something on your own, separate from your employer, not
using employer resources (not even a single paperclip), that does not
commercially compete with your employer, you'll probably be OK no matter
what you sign. In short, an employee has a duty of fair dealing with the
employer. You can't use the knowledge learned from work to compete with the
employer.


"Boyce" <Boyce@Beeker.localhost> wrote in message
news:kB49d.416$233.331@okepread05...

I work for a company that was merged with an even larger company this
year. Employees are now required to sign an agreement "as a condition
of employment" with the new company that includes a very troublesome
intellectual property clause.
The contract uses the words "and/or" with the / symbol to indicate
that anything created with company resources or with company owned
intellectual property or while the employee is employed by the
company will belong to the company. Further it indicates that all
intellectual property that the employee may own will belong to the
company and that the employee must surrender all rights to any
intellectual property at the company's request.
I've been reassured that the company does not want rights to
intellectual property that I have that is not company related. I
want to continue to have the right to create new intellectual
property that isn't company related (and doesn't use company
resources or company owned intellectual property...etc) without
having to worry about my rights to retain ownership of that
intellectual property.
I live in Texas but I understand that the contract for California
employees has an exclusion for that sort of thing.
My questions are:
Does the use of the "and/or" in the contract mean that the contract
is binding if only one of the stated conditions is met? (I'm employed
by the company but don't meet any of the other conditions.)
Can a company claim intellectual property that is created
independently by an hourly employee that isn't related to the
company? (I do tech support but develop software as a hobby which is
completely unrelated to anything I do for the company.)
Would signing this contract potentially cause me to face legal issues
as I develop software completely unrelated to the company? (If one of
my software programs proves very lucrative will they have sufficient
grounds to bring a successful suit against me?)
Would signing this contract keep me from being able to contribute to
GPL (think GNU/Linux) software? (It is important to me that I be able
to contribute to GPL software without worry that anything I
contribute might be owned by my employer and thus impossible for me
to donate.)
Your comments are appreciated, your legal expertise is begged.
 
 
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