Who owns the idea/innovation you came up with at work? Tuesday, February 20, 2007
There's an interesting story in the FT today about a former marketing employee of Euronext-Liffe who is being challenged in court over who owns the patent right to electronic trading inventions he devised whilst working at the Exchange.
Ordinarily things that you invent in the course of your employment belong to your employer. Yet the judge in this case has already ruled that the innovations were not created in the course of the employees normal duties. So this puts a boundary round what the company owns.
However the judge has already rule that the creativity occurred because the employee was specifically asked to look at a specific topic - "It was in solving this problem that Dr Pinkava made his inventions. They were, thus, made in the course of his specially assigned duties".
The inventions were a system and related functions that facilitated the trading of a variety of derivatives.
And guess what - the Exchange hadn't been particularly interested when he first approached them with the ideas to get them to engage/participate in developing it. It was only when the patents were being filed and the system got interest from potential customer that the Exchange woke up and decided to exert its ownership claims.
I mention this for several reasons
- Many employees develop their ideas based on on things they've been involved in at work. If you want to exploit your idea, you may want to consider offering it to your employer first. It's probable that they will not want to proceed with it because big companies are dumb (I'll leave aside the possibility that your idea is dumb) and rarely entrepreneurial. In this scenario, simply ask your employer to confirm in writing that they waive their claims. Obviously this approach carries risks since it a) may spook the middle manager you spoke to who simply says no b) it rules out the opportunity for you to sneak off and develop your idea in the hope that your former employer forgets about you and fails to spot you exploiting the idea.
However, if you don't do this then you could end up in a litigation battle and that normally drains you of cash, draws your attention away from your business and scares your customers who worry about being sued for patent infringement - This case implies that companies don't own all your ideas whilst you are working for them, even if you worked on them after work on the company premises, provided that it's not something that you did as part of your normal duties i.e. if you code a system for your employer then you can't claim its yours but if you develop a useful application unrelated to your job, that should be ok. It common for employment contracts to stake a claim to such developments as well simply because you used their facilities.
Labels: innovation, patents
posted by John Wilson @ 4:26 PM Permanent Link
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2 Comments:
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At 9:27 AM,
Hawkeye said...
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I found this one quite interesting, because usually when I sign contracts with Intellectual Property clauses in them I argue for making them more specific In other words if I happen to work for a company developing software for the fund management industry and I happen to invent a new way of programming remote control devices for TVs and the like I would be extraordinarily annoyed to have the company I work for laying claim to such an invention. I have faced comments like, "Ah, but we would never do anything like that." To which I have responded with, "You might not, but who is to say you will still be in your job when I eventually do something like that." I don't mind assigning my employer rights to things I develop in the course of my work (even in the case of 'special' occasions which might not necessarily be my normal work), but I do draw the line at the company believing that it owns every thought in my head. If it did, it is clearly not paying me enough. I agree that where I have used facilities at work this would create a gray area and thus it makes sense to do this work at home, in your own time, using tools, equipment, facilities which have not been paid for by your employer.
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At 5:40 PM,
said...
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Don't imagine employers won't misrepresent things... Where's your proof you did it at home? If they claim you were using their tools, equipment and facilities don't imagine that lawyers can distinguish your truth from their lies. The only way to be safe is (and I know this from bitterest hindsight) to get your bosses to sign documents stating exactly what you've been assigned e.g. Once you're asked/commisioned to do a new job spec it out and get sign off... Also never be tempted to big yourself up in your annual appraisals (if you have them) for these can be distorted in court - In short BEWARE OF AND PREPARE AGAINST UNSCRUPULOUSNESS!
