From: bsmith@ecst.csuchico.edu (Charles Bennett Smith)
Subject: Re: Intellectual Property - Your employer's position?
Organization: California State University, Chico
Date: Sat, 11 Apr 1992 07:09:00 GMT

In article <jc3sjvg@sgi.sgi.com> rpw3@rigden.wpd.sgi.com (Rob Warnock) writes:
>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.

That is everything you do WHILE WORKING FOR THEM, right?  I mean, if I work
in the computer industry and there is no termination date on the agreement,
and the agreement has very broad interpretations, it sounds like I cannot
continue my line of work any longer.  Is this right?

>
>+---------------
>| 	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].

I have seen patents which are held on algorithms developed at Bell Labs
(I think) where they are held by the designer, not the company.  I would
assume that the company footed the bills for the lawers, etc.  It seems to
me that if I come up with a zip bang new algorithm to solve a problem it
belongs to me.  What belongs to the employeer is the particular
IMPLEMENTATION that was coded for the work I was doing.  Is this not the
case?  If it is the case, then doesn't the FIRST programming job you take 
also have to be the LAST one you take?  

This all sounds like a very sticky business.  What rights do they have to
what is in my mind?  The work (actual applications code, etc) I do is theirs.
No disputing that.  Afterall, that is what they are paying me for.  But the
ideas are not theirs, they are mine.  Where's the line drawn?

>
>+---------------
>| 	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.

What about without the agreement?  Currently there is no agreement.

>
>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.

The problem I am having is determining what is related.  If the company is 
a programming shop, and I program for a living, then it would seem that
EVERYTHING I do is related to that first job.

>
>+---------------
>| 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.

If the "description" in the document is something like 

	A computer program

then how exactly can you defend yourself if you write another computer 
program for another company later on?

>
>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
>

Thank you for your comments.  

-- Bennett
-- 

Lassen Research                                   Bennett Smith
300 Salem Street                                  bsmith@ecst.csuchico.edu
Chico California  95928                           (916) 343-6421
Newsgroups: misc.legal.computing