Work Contract - IP and Copyright

[the_candyman]

I know I am probably being stupid but I thought I would ask this wonderful forum first before going any further.

So I work in IT, and I have this in my contract:

Anything the employee invents, develops, creates or makes as part of their job is the intellectual property of the employer. The employer must be told about it immediately and the employee agrees to take any necessary steps to transfer ownership.

This may include but is not limited to:

• trade marks — signs (including brand names), slogans and logos

• patents — inventions, including new products or processes, and how something is made

• designs — product appearance

• copyright — original works, including written material, drawings, film and sound recordings.

Now this says "As part of their job." My questions are: if I was to create something not IT work related, like a new form of energy, a book, new currency, home business on painting or building, would this clause affect me? Would I need to inform my boss on my dealings outside of work and get them to sign some sort of waiver or amend my contract in some way?

Thanks peeps!

 

[Rotty]

"as part of their job" is the important bit

 

[[FnG]magnolia]

That's so loosely worded as to likely be unenforceable. 'As part of their job...' reads like something a 1st year legal student would draft.

 

[dowie]

Now this says "As part of their job." My questions are: if I was to create something not IT work related, like a new form of energy, a book, new currency, home business on painting or building, would this clause affect me? Would I need to inform my boss on my dealings outside of work and get them to sign some sort of waiver or amend my contract in some way?

Well would the book be created as part of your job? Would the new currency be created as part of your job?

Thats the key thing... obviously some people work from home or perhaps think about a solution for something at work on the weekend or might come up with a brilliant new idea related to some project as work that might be able to be patented... those are things you're doing as part of your job.

So perhaps you might clarify - are you planning to writer a book and if so is it being done in relation to work - like a guide/manual for the software you work on/that your company makes say or something along those lines?

Because if you're talking about say writing a fiction book/novel then that isn't likely to be relevant here.

I think if you are going to have a side business/project then it is perhaps worth keeping them in the loop about it if it is completely unrelated. What other relevant clause (or indeed background checks) do you agree to - do you have to declare any interest in other companies for example like whether you're a company director and/or any equity stake above a certain size? If so then perhaps better to inform of a serious side project sooner rather than later.

 

[wolfie138]

why not just ask your company's admin/legal/HR staff?

 

[mmj_uk]

They just want to get hold of your ID photo for the future Chinese 5G facial recognition police state.

 

[llamadal]

Don't use work time/work property on anything external

 

[stockhausen]

. . . if I was to create something not IT work related, like a new form of energy, a book, new currency, home business on painting or building, would this clause affect me? . . .

Do you spend much of your time at work (which is presumably IT related) creating new forms of energy, books, new currencies, home businesses, paintings or buildings?

I know the law is an ass but . . .

 

[Hades]

Don't use work time/work property on anything external

This is important. Never use a work PC, email, etc on any of your own work.

 

[the_candyman]

I don't really want to talk about my private life at work if I don't have to. The boss is pretty straight up and would be fine with it, just thinking over legal stuff if I was to be shafted on the potential $1 I could earn. Everyone is money grabbing these days, not that I am in it for the money.

Basically I have a number of ideas for fiction novels, not related to work. I wouldn't use work devices to create the works. I have already taken steps to separate my work life devices from my home devices to give a line in the sand due to personal reasons so that part is already good.

I know the section is pretty loose so hence the questions. I may just have to ask the boss about it and see what he says.

 

[GiraffePencils]

It's always good to ask and get it added in,
I and a couple of friends have asked to have a specific clause with relation to 'board games' haha

 

[Hagar]

I remember this clause or very similar from thirty years ago, working as an employee Civil Engineer.

If you develop something possibly based on knowlege gained as part of your employment and it would assist the employer in his business, ie he could develop an income stream for the company using it then where ever or on what device it was developed on he may claim an interest. Mostly unless it was within the normal business of the company he / they would not.

If however you developed The Killer App and registered it in your own name it is possible they may come to you as it would be difficult for you to prove it was entirely outside of the company business. A few fictional stories if you can get a publisher are probably of minor interest to them as it would be provable (I hope) that they came from your imagination and are nothing to do with work.

 

[[FnG]magnolia]

^ It is quite common and mostly acts as a deterrent rather than an enforceable clause with some notable and high-profile exceptions.

 

[dowie]

The don't use work equipment/work time comments are probably more applicable to broader clauses than the one the OP is subject to. Like the google employees working on a start up/side project who won't even mention it to their colleagues in case a comment/advice from them constitutes help and/or a claim it was partially developed in the course of their employment.

The OP's clause is a bit more narrow and he has mentioned a fiction book, I highly doubt that anyone is going to care about that, stuff about not discussing with work colleagues or worrying about work equipment is probably irrelevant there - in fact he could probably e-mail around a first draft to colleagues on his lunch break and ask them to give it a read/feedback etc..... it has nothing to do with his job and so I don't see how it is affected by the contract he has in this particular situation.

Conversely I don't think it matters that he doesn't use work equipment or work time if he's say writing add on software for the project he's working on at work or snazzy new bit of software that works with the API for his company's product and directly competes with the software he develops at work.... that is something directly related to his job and the fact he's not used work equipment or done it in work time isn't particularly relevant... it is the fact that he's created something directly related to his job/his employer's product/line of business that is applicable.

The big tech firms have broader clauses because their businesses are so broad - almost any tech side project probably competes with a potential internal project at some large firms, a smaller or mid sized tech firm doesn't need to be so broad and is more interested in their product area which is going to be fairly distinct to employee side projects in plenty of cases.

(Of course for anything serious you speak to a solicitor to check regardless - doesn't take much for them to review a contract and provide guidance on what you can/can't do)

 

[D.P.]

I know I am probably being stupid but I thought I would ask this wonderful forum first before going any further.

So I work in IT, and I have this in my contract:

Anything the employee invents, develops, creates or makes as part of their job is the intellectual property of the employer. The employer must be told about it immediately and the employee agrees to take any necessary steps to transfer ownership.

This may include but is not limited to:

• trade marks — signs (including brand names), slogans and logos

• patents — inventions, including new products or processes, and how something is made

• designs — product appearance

• copyright — original works, including written material, drawings, film and sound recordings.

Now this says "As part of their job." My questions are: if I was to create something not IT work related, like a new form of energy, a book, new currency, home business on painting or building, would this clause affect me? Would I need to inform my boss on my dealings outside of work and get them to sign some sort of waiver or amend my contract in some way?

Thanks peeps!

This is a standard contract, the key part is "as part of their job". This needs careful consideration. just because you invent something in your spare time at home on your own computer doesn'tautomatically mean it isn't part of your job, especially if you are salaried. The risk is present if you invent or develop something is linked to the work you, even if indirectly. If you do start thinking of an idea outside work that coul;d be taken as being linked to yuor job you should immediately contact the IP department and manager to try and create a case for clear separation.

 

[AHarvey]

I'm a photographer and every time I get this I go to HR and explain my concerns and I'll reword it so that it covers anything developed as part of my day to day duties within the business.

One company refused to change it so I just sent the contract back signed with that part completely removed, they never chased it. Another, replied via email stating that my photography would be safe and what that covers which I then printed off and stapled to the contract. Also, forwarded it to my personal email.

Overkill, maybe, but better safe than sorry

 

[Minusorange]

You're only supposed to sign a contract if you fully understand it

 

[MonkeyBasher]

This is common in software engineering contracts.

If your on the clock then the company owns it.
If you use company resources, services, accounts then pretty much the company owns it.

If your salaried and what your working on in your own time is linked to or could be linked to your job, the people or the services you use then you need to contact legal early on so you are covered.
The side-projects mentioned above is a good example where you could stand on peoples toes, infringe on copyrights / TM or even create competing products. You could find your self getting sued or worse if your company ends up being liable for something they were not even aware of.
Say for example you use a recent API that you were introduced to at work and use daily involving self driving cars. Someone downloads your side project code and there car blows up.

As you mentioned you work in IT and your proposed side-project is non-IT it will not be an issue. Your employer isn't going to care about your twilight fan fiction 60 shades cross over.

 

[Raymond Lin]

My own equipment (computer, software licence, camera etc) in my own time for my own wedding photos.

There is no cross over.

 

[wolfie138]

Your employer isn't going to care about your twilight fan fiction 60 shades cross over.

given the money that's made, you never know!