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[smoosh]

I have an interesting situation I'd like some opinions, legal and otherwise, on.  I work for a company (We'll call them "Pear") that deals in computers and software.  My particular function at this job is sales and customer service specifically.  I am not a developer of anything.  However, I have recently started studying Perl programming and will be experimenting with it soon.  The problem here is that I remembered (after someone reminded me of course) that when I came to work for Pear I signed an agreement that said anything I develop or invent is THEIR intellectual property.  Now I am no legal expert but something about that sounds illegal.  Can they really take whatever I come up with and profit from it or claim it as their own?  Or is this a scare tactic of sorts to try and line their pockets more.  I like my job and don't want to leave but I also want the freedom to develop and learn with someone else claiming my ideas as their own.  I'm not necessarily looking to profit from my work (although admittedly it would be nice) just to learn and become more knowledgeable in the computer field.  Pear is a great company but I feel this restriction is not only unfair but ridiculous and potentially illegal.  Any thoughts?

[TheTrademarkCompany]

Most employers these days - especially employers of programmers - have codified what is known as the work for hire doctrine into their employment agreements.  In short, if you develop it on their time using their resources they own it.  This is what keeps the programmers at Microsoft from leaving and claiming they own Windows 7, etc.

The first step in your analysis should be to examine any and all employment agreements you signed or were otherwise provided to you in the form of employment manuals or otherwise which deal with "ownership" of intellectual property and other materials created while working for Pear.  They are usually pretty clear.

Of note, however, they generally should not cover items that you develop on your own time (i.e., away from the office) and on your own equipment (i.e., not on an employer-provided laptop).  But that would be spelled out in the agreement.

So see what you have in terms of agreements and what it has to say.

Good luck,

Matthew Swyers

[smoosh]

Thanks for the reply.  I am currently not employed as a developer and anything I am doing or will be doing is on my own time with my own equipment.  However if memory serves me correctly, the agreement I do remember signing (still waiting on clarification from the HR department) only said that anything done while employed by Pear was the property of Pear.  It did not specify whether or not I had to be on their time or using their resources (equipment, systems, etc.).  It just said that if I was employed by them and created something (software for example) that they owned it outright.  I asked around at work and that was the consensus, but like I said I have asked for clarification from HR along with copies of agreements I signed.  Will take your suggestion and go over the employee manual again for more insight.

[DogDayPM 9er9er9er]

Asssuming you're in the US, you may need to consult an attorney specifically on your employment agreement.  Usually there will be a section of the agreement that sets out what state law will be used to enforce the contract.  Some state laws give the employer a lot of leeway when it comes to employment contracts, others are more narrow.

It's not at all unusual for employment contracts to be a little (or even more than a little) over-broad when it comes to trying to set out ownership of IP.  In the company's view this is kosher since they argue John Doe would never have the background enabling him to make the new IP if not for his exposure in the workplace.

Anyway, for a pure sales position your state law (or the state law specified by the contract) might say that company ownership of your developments is over-broad and may find the contract unenforceable.  On the other hand, if you are hired as a scientist or developer, such a contract (if reasonably limited to developments in the company's field) would normally be enforceable anywhere as far as I'm aware.  Most companies use a "1 size fits all" employment contract type so they don't have to chase down an employee who migrates from sales to tech support to development (where he no longer has an appropriate contract if it didn't initially grant inventions to the company).

You mentioned in your second post that you are not "currently" a developer.  Were you when you were initially hired?  That may matter.

Good luck, these things are never terribly clear cut. 

P.S. Do your kids watch iCarly on Nick?

[MYK]

DD's right, you'll need an attorney in your state to tell you how your contract will be interpreted.

For example, Illinois has the Employee Patent Act, 765 ILCS 1060, which limits what employers can force employees to assign to them, at least within patents.  (Software development may be treated differently.)

I've heard, anecdotally, that California likewise puts some pretty strict limits on employers, but I couldn't tell you what those limits are.

[smoosh]

"You mentioned in your second post that you are not "currently" a developer.  Were you when you were initially hired?  That may matter."

No. I have never been a developer. I have always been in a sales/customer service position. However I would like to develop. Developers who work for the company directly work at the home office. Sorry for being vague but unfortunately I must be somewhat anonymous.  I will look for attorneys in my area that specialize in this kind of law once I have the appropriate documentation from my employer. Anything else I should be looking for?  Thanks.

[JimIvey]

Well, we're delving into state contract law here, so advice from patent practitioners may be a bit like pears and oranges, if you catch my drift.  Where you're located matters.  I think Pear is based in California.

Here are a few things that work in your favor.  First, you're not hired to develop.  Second, I assume you're playing with perl on your own time at your home.  Third, I assume that the things you're getting perl to do are completely unrelated to your responsibilities at work.  All those things work in your favor, despite whatever draconian clauses you might have in your contract.  For example, you don't really have to give them your first-born child, which you obviously created yourself, even if it's in the contract.  Same if you make a great souffle'.

If you're experimenting with perl on your work computer(s) and using it to automate some of your work tasks, then the software you're creating probably belongs to Pear.

Lastly, you might consider what you hope to do with your perl creations.  Let's say you want to hack a SqueezeBox virtual media player for running on your Wii.  Even if Pear would love to own that, it won't come to their attention if you have it running in your home and nowhere else.  Even if you release it as open source (and please tell me if you do), it would have to make an awfully big splash to justify mobilizing lawyers to wrestle the code from you.  And, even so, the whole thing would go away if you just terminate the project and give them the code.

However, if you think your experiments have value and might seed a great startup idea, then you have bigger problems and ought to seek some legal advice.  Once you aim to make big money on your development, there's a greater chance of catching the attention of Pear brass -- perhaps even Steve Knobs.  Best to be prepared if that happens.

Welcome to the world of development!  Go forth and proliferate!

Regards.