From: rpw3@rigden.wpd.sgi.com (Rob Warnock)
Subject: Re: Intellectual Property - Your employer's position?
Organization: Silicon Graphics, Inc.  Mountain View, CA
Date: Fri, 10 Apr 1992 08:58:15 GMT

bsmith@ecst.csuchico.edu (Charles Bennett Smith) writes:
+---------------
| Greetings.  I have just had a copy of a legal document called an
| "ASSIGNMENT OF RIGHTS" handed to me by my boss...
+---------------

Such assignments of rights (however feudal they may seem) are quite typical.
I've had to sign one everywhere I've ever worked or consulted.

In some states, such agreements may actually be to you benefit, since
*without* such an agreement, state law may assume an even more restrictive
posture than the agreement. (It all depends on the state.) But in general,
if you get a salary (and a W2, etc.) everything you do is "work for hire",
and the company owns all rights to it.

+---------------
| 	1.  They intend to attempt to Patent the product...
+---------------

If your state defaults to a "work for hire" posture, that's correct.

Generally the agreement will also require you to assist them in such patent
applications, even for a period of time (~2 years) after leaving the company
[and for consulting you will be compensated at a "reasonable" rate].

+---------------
| 	2.  What will come of any other "ideas" which I have thought about
| 	    during the past three years.  I have many ideas which the
| 	    company is not currently interested in, which I have formulated
| 	    on my own.  Will they own these also?
+---------------

Generally, without language in a specific agreement to the contrary, yes...
especially if you are an "exempt" employee (that is, a salaried "professional"
who is not paid overtime). The assumption is that all your thoughts 24hrs/day
belong to the company.

Some companies' agreements or some states' laws specificially exclude areas
of endeavor not directly connected with past, current, or (here it gets tricky)
reasonably anticipated future products/services/markets of the company.
So, if the company makes computers and you invent a new washing machine
frablizz, it's yours. But if the company does general hardware/software
consulting and you develop something that they considered but didn't choose
to do at the time, WATCH OUT! It's probably theirs, unless you get them to
sign an explicit release of interest.

+---------------
| Another thing to mention.  This is a relativly small company and for
| the past three years there has never once been any mention of legal
| documents and the like...
| Also, there is not a formal employment agreement which states anything 
| about non-disclosure or anything like that.
+---------------

Each state has laws about what the defaults are in the absence of such
agreements. As I said above, the default is usually slanted quite far
towards the company's side, with everything you do being "work for hire".
(That is, they paid you to do it and you took the money, thus they own it.)

Also, it is not unusual for a start-up to be somewhat sloppy about this
during the first few years, only to suddenly tighten up as they expand
into less corporate-friendly states (or they get a new, careful lawyer).

You definitely need to check into your state's laws to see what rules
you were operating under *before* you sign(ed) the agreement. But *if*
you have any prior-agreement rights, to preserve them you may well have
to resign *before* you sign. See a lawyer.

+---------------
| There was not even a formal document outlining
| just what the product was to be.  I don't see any way to prove what
| is a part of the product and what is an independent idea.
+---------------

Well, that's not so hard. If it's anywhere *close* to what you were working
on, it's theirs, ragardless of whether they decided to use it or not at the
time. And if you ever used any of their equipment (word processor, computer,
'scope, logic analyzer, *parts*!), it's even more likely.

I am not a lawyer, just someone who has had to sign a lot of these things.
They all look kinda familiar after a while. But don't let that lull you to
sleep. The details vary. They're *not* all the same. Be particularly careful
if you're an independent consultant!

And if you find some particularly nasty clause buried on page #5 paragraph
#13 sub-section #26, try negotiating a change in the wording. I worked for
a company several years ago that had an agreement with an especially broad 
interpretation of what was "theirs". I struck a few sentences, changed a
few "all"s to "directly related to the business of the company", and so on,
initialled the changes, and said I couldn't sign without the changes. My
boss-to-be looked at my changes, said, "Yeah, those are reasonable", and
initialled them too.

(Later, I found out several others had made similar changes. HOWEVER... the
company never altered their standard form! Only employees-to-be who balked
ended up with reasonable agreements.)


-Rob

-----
Rob Warnock, MS-9U/510		rpw3@sgi.com
Silicon Graphics, Inc.		(415)335-1673
2011 N. Shoreline Blvd.
Mountain View, CA  94039-7311

Newsgroups: misc.legal.computing