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Author Topic: Question on Preserving IP from Employer  (Read 508 times)

grateful

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Question on Preserving IP from Employer
« on: 01-09-18 at 09:03 pm »

I live and work in the US.  I just started a new job.  I have several automations I created outside work in the past.  I'd like to start using them at my work, but I want to make sure it will not give the intellectual property of the automations to my employer and not me.  I'd also love to learn of any steps I can take to use the automations at work without losing IP.  I really appreciate any help!

Here are some relevant facts:

- Programming is not a job responsibility.
- I'm not compensated for creating automations.
- The automations were not created during work or with any of my company's resources.
- While a lot of work was already done on the automations before joining this company, I would like to be able to make changes to them or even create new ones while employed here - previous bullet would still apply.
- The automations are in a support process (internal audit) of the company.  The company is not in the market of selling anything related to internal audit.
- I have not signed any agreements with my employer regarding to this type of product.  I did sign a standard agreement related to their products, which are in an industry miles away from internal audit.
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Tobmapsatonmi

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Re: Question on Preserving IP from Employer
« Reply #1 on: 01-12-18 at 05:53 pm »

I live and work in the US.  I just started a new job.  I have several automations I created outside work in the past.  I'd like to start using them at my work, but I want to make sure it will not give the intellectual property of the automations to my employer and not me.  I'd also love to learn of any steps I can take to use the automations at work without losing IP.  I really appreciate any help!

Here are some relevant facts:

- Programming is not a job responsibility.
- I'm not compensated for creating automations.
- The automations were not created during work or with any of my company's resources.
- While a lot of work was already done on the automations before joining this company, I would like to be able to make changes to them or even create new ones while employed here - previous bullet would still apply.
- The automations are in a support process (internal audit) of the company.  The company is not in the market of selling anything related to internal audit.
- I have not signed any agreements with my employer regarding to this type of product.  I did sign a standard agreement related to their products, which are in an industry miles away from internal audit.


Bumping in case others have thoughts on this. 

Here's my two cents.  In circumstances different than yours (in that the employee was hired in to do specific work similar to his/her prior work) I have seen some fairly extensive revisions to the standard employment agreement where both parties recognize the existence of the guy's prior work and his ownership of it and carefully identifying both his formal and informal prior IP, and setting out his recognized ownership of it, and also setting out who would own any improvements to it.

Your case differs because your own IP is generally off-topic vs. the company's products and presumably any IP they have in the products or their manufacturing.  Still, things can get ugly 10 years from now when you guys get divorced, particularly since you desire to continue developing your own IP on the side while employed there, and using it in your new function.

Depending on the value of this stuff to you, it might be worth sitting down for at least a couple of hours with an employee-side employment lawyer and figuring out your options and whether you want to try to formalize this stuff with your employer.  Depending on market and attorney experience, at a guess, this first step might cost you $500, give or take a hundred or two.   After that, if you go forward with an attempt to amend your employment agreement to have them recognize your ownership in your IP, cost will just depend on how many back-forth passes it takes to get the job done. 

Note it is also possible the company's response to your attempt to clarify the situation may be, "Hey, don't worry about it, your employment agreement obviously doesn't touch this stuff, and our legal dept's too busy to deal with this crap, so drop the matter or quit, your choice".
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