Job Offer Contract Claiming My Intellectual Property?

[Deactivated] on 15/10/2021 - 11:09
Last edited 15/10/2021 - 11:42

Got a job offer yesterday and this clause worries me. I've messaged a lawyer mate of mine but I'm asking what Ozbargain thinks because it will be funny. I've had this in previous retail contracts while at Uni but my current Professional IT job doesn't have this clause.

They said "during the Appointments which relate to or are capable of being used in the business of any Group Company" means that it can only apply to work done in company time and when I asked for changes to make it clearer and less open to interpretation they said to take their word for it:

13.1 The Employee shall give the Company full written details of all Inventions and of all works embodying Intellectual Property Rights made wholly or partially by him at any time during the Appointments which relate to or are capable of being used in the business of any Group Company. The Employee acknowledges that all Intellectual Property Rights subsisting (or which may in the future subsist) in all such Inventions and works shall automatically, on creation, vest in the Company absolutely. To the extent that they do not vest automatically, the Employee holds them on trust for the Company. The Employee agrees promptly to execute all documents and do all acts as may, in the opinion of the Company, be necessary to give effect to this clause 13.1.

Intellectual Property Rights: patents, rights to Inventions, copyright and related rights, trade marks, trade names and domain names, rights in get-up, rights in goodwill or to sue for passing off, unfair competition rights, rights in designs, rights in computer software, database rights, topography rights, rights in confidential information (including know-how and trade secrets) and any other intellectual property rights, in each case whether registered or unregistered and including all applications (or rights to apply) for, and renewals or extensions of, such rights and all similar or equivalent rights or forms of protection which subsist or will subsist now or in the future in any part of the world.

Invention: any invention, idea, discovery, development, improvement or innovation, whether or not patentable or capable of registration, and whether or not recorded in any medium.

Poll Options

  • 23
    They will own your IP on work time
  • 2
    They will own your IP while you are employed
  • 38
    They will own your IP but will only claim it if it is related to work
  • 4
    They will own all your IP and will be claim it if becomes valuable
Education & Work

Comments

  • MS Paint on 15/10/2021 - 11:11
    +18

    This is normal isn't it?

    • jellykingdom on 15/10/2021 - 11:12

      Yes

    • [Deactivated] on 15/10/2021 - 11:13

      Not at my current job, in a similar Support Engineer role

      • MS Paint on 15/10/2021 - 11:14
        +6

        My employer has made this clear for at least the last 20 years and before that it was probably just implied. It also makes sense and seems fair to me.

        • [Deactivated] on 15/10/2021 - 11:15

          Haha my question is if "during the appointment" it applies during work time or anytime you are employed

          • MrThing on 15/10/2021 - 11:16
            +5

            @[Deactivated]: anytime you are employed

          • MS Paint on 15/10/2021 - 11:17
            +1

            @[Deactivated]: If your invention is so good and will make you rich then hand in your notice and run with your idea. Simples.

            • [Deactivated] on 15/10/2021 - 11:21

              @MS Paint: Under the contract they will still own it as it vests to them at moment of creation

              • MS Paint on 15/10/2021 - 11:23
                +6

                @[Deactivated]: Not if you came up with the idea walking out the door for the last time waving and yelling "seeya b!tch35"

                • [Deactivated] on 15/10/2021 - 11:31
                  +1

                  @MS Paint: You would be unlikely to leave a paid job if you just had an idea

                  • redfox1200 on 15/10/2021 - 11:52
                    +1

                    @[Deactivated]: you're missing the point, just claim you worked on the idea after you quit

  • freefall101 on 15/10/2021 - 11:15
    +1

    IMO, rewrite the clause, send it back to them and see if they'll accept it. I've done that before, the company just accepts it because it's easier than arguing and usually no one cares. If you ask them to rewrite it themselves they never will.

    I can see why it is the way it is, you could just claim you invented something outside of work time while using all the knowledge and tools you've gotten from the company and they get squat. If you're going to do a side gig while working in tech, make sure you don't draw from anything at work at all.

    • [Deactivated] on 15/10/2021 - 11:17

      Yes they seem to be in a rush, if I give my 2 weeks notice I have to give it today to start on 1/11. I will again see my lawyer friend or lawyers on Ozbargain before requesting a change

      • DragonautDruid on 16/10/2021 - 10:25

        Is it full time work? If so, how likely are you to actually spend the time outside of work creating professional level stuff for other people anyway?

  • MrThing on 15/10/2021 - 11:16
    +6

    This is pretty standard clause.

    you come up with a discovery or invention which is related to your line of work or your company / group of companies - they own the rights to it

    As you said, Unis have the same clause for researchers

    • [Deactivated] on 15/10/2021 - 11:20

      Yeah the company is a website CMS business, my concern is it covers domain names so any website side business I make could be claimed even if not build or related to that business

      • MS Paint on 15/10/2021 - 11:24
        +1

        Then don't sign the contract and find another job. Not worth the stress my friend.

        • [Deactivated] on 15/10/2021 - 11:26

          It's not that simple, its a small concern from me. I already have a job, this new one seems better in other ways and I doubt they will claim unrelated startups not made on work time and will have a hard time claiming it even if its in the contract.

        • DragonautDruid on 16/10/2021 - 10:21

          Stop feeding their anxiety. This is standard creative contract stuff. it's the nature of jobs with IP creation. It's extremely unlikely they will claim anything OP creates unless it's directly related to their company and they want to sell it/create it for a competitor.

      • MrThing on 15/10/2021 - 11:27
        +1

        if you were concerned about very specific items, you would ask to contract to be amended to specifically itemise these things to avoid any doubt later on.

        • [Deactivated] on 15/10/2021 - 11:29

          They said no they can't do that, to take their word, but freefall101 suggested to rewrite it and send it back

          • hothed on 15/10/2021 - 15:24

            @[Deactivated]: I'll give you $5million for your house, but take my word for it and sign the contract that says i'll pay 5 bux.

  • SF3 on 15/10/2021 - 11:31

    It's to prevent another facebook alike claim to fame. Look how that turned out :)

    • 87percent on 15/10/2021 - 12:56
      +1

      and Pied Piper!

      • pennypacker on 16/10/2021 - 12:25
        +1

        Hotdog/Nothotdog?

  • dust on 15/10/2021 - 11:33

    Yep this is super normal.

  • avoidfullprice on 15/10/2021 - 12:12

    Like watching silicon valley

  • Bonsaichop on 15/10/2021 - 12:47

    Once upon a time I worked for a company that falsely pretended to sell fruit and this was not only standard but enforced. Anything created during your employment whether on your own time or company's time was company policy.

  • pegaxs on 15/10/2021 - 13:29

    Easy. Get your lazy/stupid on and don't invent anything while an employee unless it's part of your job to design/develop new products or ideas.

    I have worked in several industries where this clause is common practice. When questioned why I am not developing new ideas or products for the company outside what I am paid to design/come up with, I just laugh and quote their clause.

  • theHMASfriendship on 15/10/2021 - 13:49

    Seems standard

  • weezlebub on 15/10/2021 - 14:04
    +1

    "during the Appointments which relate to or are capable of being used in the business"

    so while you're employed by them (not previous work, not anything after … the question is what you do outside of business hours, I would say that if you're working on something in your own time, they wouldn't have a right to it, but that's for the lawyers (they don't pay you 24 hours / day - unless it's salary) …

  • Bjingo on 15/10/2021 - 14:45
    +1

    My concern is

    "The Employee shall give the Company full written details of all Inventions and of all works embodying Intellectual Property Rights made wholly or partially by him at any time during the Appointments which relate to or are capable of being used in the business of any Group Company "

    this writing makes it seem they have a large group and any IP made that can relate to any of the groups companies will be their IP. It is standard that if you come up with an innovation relating in any way to your duty they take ownership, but this clause makes it seem like they are trying to allow them wiggle room to claim ownership of IP that is not related to your duties but related to any company in their group.

    If you think you came up with some amazing invention/innovation that you believe could be big, definitely do not do any digital work on it at most hand written non dated items, then leave when you have the chance. Because if you leave then start working on this thing they could have grounds to sue especially if the timeline of work shows you working on it while employed.

  • tallkid123 on 15/10/2021 - 17:28
    +1

    Anything you create on company time using company resources is company property.

    If you want to create your IP, do it outside of company time using your own personal resources.

    • Sum-Ting Wong on 15/10/2021 - 21:55
      +1

      I recall reading an example that went something like this:

      You are employed to solve some problem XYZ relating to a product of the business.

      One morning in the shower, after making shower babies, you have an epiphany and the solution to problem XYZ dawns on you.

      Now, do you own the IP because you came up with it in your own time? Can you now take that idea and create a start up making product ZYX that solves the problem?

      Answer: the company owns the IP because you were employed to solve the problem.

  • BobD on 16/10/2021 - 08:09

    If you do wish to invent something in your own time and wish to try and retain the rights then you should keep a diary which notes the time of day you worked on it, the duration, the tools used, and any other relevant information. This may give you a fighting chance if you have a good lawyer. Even better may be to keep a second diary …..

  • tabitha731 on 16/10/2021 - 09:13
    +1

    You’re spending WAY too much money engaging with your lawyer! Its a common clause in everyone’s employment contract. The company owns u while u work form them during work hours. If you want to work on something, then dont use company resources & work on your own time, and computer, that way it’s completely your intellectual property. If you use the company’s email address to send files to personal email, then that is also company property.

    If that clause scares you so much, then dont take the job. But i can guarantee you that any future job contracts u get will have the same clause, and while u keep engaging with said lawyer, you will run out of job offers that dont have this clause, and you will run out of money to pay for this lawyer!

  • DragonautDruid on 16/10/2021 - 10:16

    This is normal. I'm in a creative job and just started at a huge company.

    It had the exact same clause in mine which worried me because I do art in my own time, including making a comic, so I was paranoid that The Company would own whatever I create.

    Thankfully I live with a lawyer who I got to look over it and they said the key words are stuff you create "in relation to work". The stuff I do in my own time is so widely different to what I make at work it's not an issue. And that it's standard for any company that has some degree of IP creation.

    So IT and entertainment. And it makes sense…it's to stop you making something for work, taking it and selling it to a competitor.

  • OzHunterNSW on 16/10/2021 - 10:41
    -1

    You are paid by the company to perform specific tasks, and what you produce in this time for the company, is the company's property, that includes "your thoughts" - concepts, innovations, etc.

    If you do not know this, then maybe the career you have chosen is beyond your capability.

    • Peck on 16/10/2021 - 13:12

      How does one prove that anything related to their private project was not done on work time, including research, thoughts, notes, etc etc.?
      I am on the company's side too!
      It is also possible that information and ideas would be gleaned through such employment, and this should benefit the employer.

  • ozbargainsam on 16/10/2021 - 13:27

    If OP started their own company that created products, they'd surely add this clause, too.

  • grips on 17/10/2021 - 12:02

    When I worked in IT, all "extra" development was done by my wife, who had also worked in IT.
    Never had a problem.

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