Ask HN: I'm a CTO for a startup and want to protect my projects | Hacker News Reader

Ask HN: I'm a CTO for a startup and want to protect my projects

25 pointsthrowaway0x99918 comments

I apologize for the throw away account created for this post, but anonymity is important to me.

I am a CTO for an emerging technology startup Company based in Brooklyn. We are growing and maturing as a Team. Our Product is stable and we continue to serve the Consumer and enterprise spaces. Our Company is starting to widen its scope on technologies used within our organization. The Company has started to use, invent, and work on technology that I care about outside of work. I am worried that my existing and new projects, open or closed, could be threatened if I don't protect myself. I have engaged our Company counsel to begin the process of amending my employment agreement to address this. However, I'm unsure what to explicitly call out to protect past projects as well as potential new ones.

How does one effectively and intelligently detail previous projects while specifying potential new ones as it relates to certain technologies in an employment agreement? For instance, if I were working on a database system off hours, research or applied, how do I protect myself if the Company decides to build database systems? In theory, my employment agreement with the Company says that work is now owned by the Company.

Basically, I am probing for advisement on how to proceed without wasting any individuals time involved in this process. I am looking for other technology leaders who have been in similar positions to give me guidance navigating this messy and sensitive situation.

Many Thanks,

The best way to not have conflicts of interest like these is to avoid them in the first place. Ways in which you can avoid them:

- do not have side projects as a C level exec that may end up competing with the company (as a C level exec you usually don't have time for that anyway)

- do not work for companies that place restrictions on what you can do in your own time

If you do not avoid the conflict you will have to engage it, and the real result is not resolved when you sign a contract or an amendment, but when you get called out and possibly when things go to court. And that is why it is better to avoid these in the first place...

How big is your company?

As a rank and file employee, I get the idea to say "my kinda sorta work related thing I do outside of work hours is my own property"

As a CTO, that seems weird. All of your energy should be going into your business. If you have time to manage side projects in addition to being a startup CTO, is CTO the right role for you?

Not to say all code you wrote for your entire life now belongs to your current company. But it seems like you have passions and you can now use these at your job. Isn't that the dream setup? Just make sure you are fairly compensated for the gains the company makes, and it should be reasonably fair? Hard to know more without details of what you are talking about...

> If you have time to manage (side projects|hobbies|sleep|exercise|health) in addition to being a startup CTO, is CTO the right role for you?

My answer, as a fellow startup CTO, is a resounding "yes." In fact, my activities that take place outside of work are crucial to my wellbeing and job performance.

Hey, you can't change a quote and then respond to it trying to make me sound stupid.

This was my quote:

> If you have time to manage side projects in addition to being a startup CTO

And I stand by it. If you are running the tech side of a young company, and want to go home and code for 3 hours on another tech startup, I am not sure you are giving your full effort as CTO. (Because at a young startup, CTO is often title inflation for "head coder dude"). At a more established company where a CTO is more the political figurehead of tech, things are different. But I was not getting that vibe from OP.

And yes, the quote you invented for me

> If you have time to manage (side projects|hobbies|sleep|exercise|health)

All but side projects are things you SHOULD do as a CTO or founder. I would not look down on a guy I hired as a CTO having hobbies, or exercising, or sleeping. In fact I do all three.

But if I was in a company of 4 people and hired someone to be a CTO... and he went home to spend his spare time coding a similar product and wanted IP to stay his? I would not be so happy

"Startup CTO" is like "food". Broccoli and Ice Cream are both food.

We are talking at too high of a level to make any sweeping statements (food is what you need for a healthy breakfast!) that will be relevant to all people calling themselves a startup CTO.

Unless you've specifically gone through the effort of stylometric misdirection and fudged the few personal details you've given us, this post has some risk of being deanonymized. (CTO, HN user, Brooklyn, growing startup, B2B and B2C, IP concerns as of Feb. 2018 -- that's a lot of bits!)

That might not end up actually mattering in any way (or maybe it would!), but if anonymity is intrinsically important to you, something to consider.

I don't think coming to the internet for advice is the best course of action.

I would recommend seeking outside counsel from an attorney who is not in any way affiliated with your company.

This is the only option. Also, you should any changes to your employment contract reviewed by outside counsel.

I assume if you're CTO, you've got some shares in the startup? I'd see it as an opportunity to bring those projects into the startup and work in an official capacity on something you're already interested in and help improve the value of the business and, by inference, your shares. Everyone wins.

Get your own lawyer. The companies counsel will have an inherent conflict of interest.

Vaguely approaching it from a UK Patents Act point of view that is the foundation for most UK digital IP but IANAL (do get counsel):

1. If you worked on this in work hours, your employer may have a claim to the IP.

2. If you worked on this on work equipment, your employer may have a claim to the IP.

3. If you worked on this using employer resources (including from the office), your employer may have a claim to the IP.

4. If none of the above are true and you were asked to work on this by your employer and you were not previously working on it, your employer may have a claim to the IP.

5. If the IP has a degree of similarity with IP by your employer and was started (or contributed to significantly) after your employment started, your employer may have a claim to the IP.

6. If all of the above are not true, your employer does not have a claim to the IP.

Any declarations or contracts that you enter into should reflect IP touched upon by #1-5 of the above and explicitly state whether or not your employer will declare an interest, no reasonable contract should preclude you from work you undertake covered by #6 (in your own time, your own resources, not asked for by work, unrelated to work and any future area that you know they may expand into, etc).

Before freelancing, I had to turn down many jobs where the company wanted to "approve" my off-hours work. Never a CTO role though. The companies that I did end up working for would add stipulations in the contract - they still wanted any extra work I did that was in the same field but agreed to filter by their verticals.

IANAL and any court action is a loss IMO.

Before I signed the contract I changed the IP assignment wording to specifically say that it only applied to work that was directly related and didn't require every project to be listed individually.

Obviously you need your own lawyer but it's going to be harder since you've already signed the IP assignment.

Personally I believe those clauses violate natural rights but of course that's not a legal argument.

They usually also say something outdated and generally impossible these days like there will be no third party components or code, which if you point out that they are invalid that way it may be a reason to rewrite that section.

Their lawyer probably won't help you. You may not be able to keep the job and eliminate that clause at the same time.

Might want to stop capitalizing things like that, that's not how you do that.

IANAL, but when I've seen this asked in the past, the guidance was pretty much "if you agree to it, you agree to it". In other words, don't work for a company which has such stringent intellectual property requirements.

That said, I'm sure others here are better qualified to comment.

You definitely want a lawyer for this. Not your company counsel, they represent the company and not you.

Happened to me, refused to work on conflicting projects for ~6 months and left. Didn't see any other way. Good luck!

Sounds like you don't believe your company is going anywhere?

If you are a CTO you have signed off all the projects to your company. Not some, all. For the entire duration of your tenure. That's why you are making big bucks and that's why non monkey companies pay big bucks to CTOs

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