Hacker News Reader

Comment by joezydeco | Hacker News Reader

So recently I came across an Invention Disclosure agreement that a company wanted me to sign. The phrasing of this kind of threw me off:

"I will promptly communicate to the Company each and every invention, discovery or item of intellectual property made or conceived by me, either as an individual or jointly with others, during my period of employment, and I agree that any such invention, discovery or item of intellectual property which I may disclose to anyone within one (1) year after the termination of my employment shall be presumed to have been made during my period of employment hereunder and shall become the sole property of the Company."

At first glance it looks like a typical "I assign everything I invent while employed" deal, but the 1 year post-employment clause sure looks like a non-complete to me.

What do you think?

View on HN

Holy shit. That is way, WAY crazier than a non-compete. That is saying you can't work at all for a year after your employment terminates, because anything you produce during that time is presumed to have actually been created during your previous employment, and so belongs to your ex-employer. Even if you go and work for a non-competing company in a completely different field, and invent something totally unrelated to your ex-employer's business, then it supposedly belongs to your ex-employer. Since no new employer could accept that situation, it essentially prevents you from working.

I'm sure that can't be enforceable at all, but it's still completely sickening that a company would put something like that in its terms.

In Germany that clause would mean they'd have to pay you your full salary for as long as they prevented you from working for someone else. So it'd be a one-year vacation whenever your employment ended, but probably not much use for your career.

Same in Switzerland. If they don't want you working for someone else, they have to keep paying you.

The only "non-compete" clauses that are even theoretically binding apply to stealing clients andn customers and the like so generally only apply to sales people.

This doesn't stop companies trying to include ridiculous non-compete clauses in employment contracts. It's sort of a silly pretence - both sides know it's not binding so the employer makes it sound as harsh as possible but the employee signs anyway.

At the end of your employment (whether fired or you walk), if they really want you to not complete, they have to offer you money - generally fully salary for the desired period of time regardless of what your contract states.

That's a year I could spend doing SICP exercises and learning to program in brainfuck. Of course, I would happily turn these projects over to the company and do so with an air of personal superiority regarding my work. And also pick up my paycheck.

That sounds very reasonable. And to take it a step further, if they want possession of ideas you have in your spare time, then they should pay for your spare time too! :)

Well, that's the basic idea behind being salaried. Theoretically you are not being paid for 40-hours a week, you're being paid for your productive output regardless of the time.

What if you work part-time? And spend your spare time on a side-project? Will they pay for it?

That's pretty interesting.

Do you think someone in Germany under such an agreement could work for another company that had no presence in Germany or, perhaps, the EU?

That would be fine because that someone would not be a competitor of the company. Although you have to consider that if you earn money while being paid through such an agreement your earnings are partly deducted from them. So if you find a job which pays the same as before, your old company will only need to pay until your income reaches 110%(125% if you moved for your new job) of your old income. You are also not allowed to "maliciously refrain" from working in that time. (But that is interpreted quite lax for the employee)

Spend the year taking classes, learning new programming languages and tools. There are ways to make it work for you.

I would just return this back to them and ask, "why?"

Regretfully the negotiations didn't get far enough to get to this point, although I told them I would have to discuss things with a lawyer if they wanted it signed. Then we would have at least had a "why" to go with it.

Thankfully the deal fell apart for other reasons, although I shouldn't have been surprised by any of it.

In some states, it's not enforceable unless there's a monetary compensation that goes along with it.

In Europe a lot of these non competes are unenforceable. I work for a U.S startup in the U.K. (British citizen) some of the clauses in our contract are just flat out illegal. It’s also 26 pages long, which is almost unheard of in the U.K. I asked about it and it turns out it was written at a U.S law firm.

To me at least, it doesn't matter if it's enforceable or not. I don't want to go through the hassle of fighting it in court, dealing with lawyers, when I could avoid it by going elsewhere. Obviously I'm lucky to be able to do that, and if I was under pressure for a new job it would be a different story.

I would expect 26 pages is unheard of even in the USA.

26 pages? That's just ridiculous.

Wouldn't your salary during the employment term be that consideration?

Consideration need not be during the same period. I can pay you $X today for something that covers the next N years.

As I understand the state laws - not if it's not stated as such. They don't allow it to be implicit in "you get salary X each year and operate under noncompete Y". A restriction on future work like that would require explicit compensation.

(And as for why people don't just add "compensated via your salary" to the boilerplate - that's an open-ended transaction, not a defined amount of compensation for the year of noncompete restriction.)

Which states?

>That is saying you can't work at all for a year after your employment terminates, because anything you produce during that time is presumed to have actually been created during your previous employment, and so belongs to your ex-employer.

But it's not. Inventions != copyright or code produced. If I author a book after employment they don't own the rights to my book. If I write code after employment they don't necessarily own my code or rights to it.

Yes. This is WAY CRAZY because enforceable or not it abuses the information and resource availability asymmetry between company and employee.

It's not just inventions, though. The phrase is:

    invention, discovery or item of intellectual property

The "item of intellectual property" would cover copyrighted material, right?

Seems way unenforceable to me, but IANAL.

>The "item of intellectual property" would cover copyrighted material, right?

Very much possible, but as someone else alluded to, this clause is incomplete without the rest of the agreement. Somewhere in the agreement "intellectual property" may be defined [better] and it may include copyright, and it might include terms that narrow down what copyright falls within their definition of "intellectual property" (i.e. copyright-able works which pertain to the business of the company). They don't want to own everything... what if I write software for a personal pet project and it causes damages... they would open up themselves to potential liability (unless they cover that, again, somewhere else in the agreement). The entire agreement text is needed for clarity and to make conclusions.

The agreement explicitly says "or item of intellectual property". It's absurd.

I wonder if you could create a toxic legal liability by assigning an IP right to the company. E.g. create a trademark about bestiality or pornography, and assign it to the company. Or file a toxic patent (it doesn't need a lawyer). Obvious difficulty to find something you can publish while avoiding legal liability yourself...

*The CLAUSE explicitly says "or item of intellectual property".

We can't conclude what the agreement means by "intellectual property". See comment to sister reply. We need the entire agreement text to make conclusions.

I can see why they've done it -- stop you from inventing something at work, knowing you can't sell it immediately, so leaving and selling it after you've left.

But the presumption clause is absolutely insane. Even if you can prove something was done after you left the company, they're still considered the owner.

Imagine someone quit that job today, 6 months later room temperature superconductors were invented, and 2 months after that the ex-employee invented a great new use for them. It's literally impossible that the invention was made at the job, but the contract still appears to claim it.

I didn't say I agreed it (I don't), just suggesting why the firm things their clause may be reasonable.

Run away. No client/employer is worth that kind of baggage.

It's even worse than a non-compete: instead of you simply being prohibited from competing with them, they automatically own your creations.

Although I agree with you - no client/employer is worth that kind of baggage - I was sort of surprised, after four months of unemployment when my last company shut down abruptly (no warning, no severance), just how many things seem negotiable when you're starting to worry about unemployment running out.

Fortunately when that is your only offer and you don't have a job you can tell the court you signed that under duress. Which is to say courts will not look favorably on the whole thing.

Courts tend look unfavorably on any agreement that doens't allow you to earn a living doing what you know how to do. As such non-competes as bad as they are are very hard to actually enforce in court. The threat of going to court though can be scary.

Remember if you need legal advice ask a lawyer not some random idiot on a forum.

The problem with noncompetes isn't that you'll get dragged into court over them, it's that old employer makes a call to new employer and you get shown the door.

Now you have to sue somebody to get your rights upheld.

The upside is that in at least some cases, you can warn the new company and they'll agree to fight the thing - or even preemptively tell the previous company off.

Obviously that's mostly going to work for people with major leverage in the job market, but there have been some notable success stories lately of people not getting sacked.

Pretty much every employer I’ve ever worked for has laid claim to all IP I produce, even on my own time using my own equipment at home. This is a very common clause in any tech company’s employment agreement. If you’re going to run away from these, your employment options are severely limited.

The “within 1 year” thing, however is one I haven’t seen before. Ugly!

I've always pushed back against "all IP even on my own time with my own equipment." You're right that it's common in tech employment, but it's never been a deal-breaker for me.

----

edited to elobrate You can almost always reach a compromise if you aren't a jerk about it and can show you understand the company's concerns. Typically I have it modified so that if I'm using their resources at all (office, computer, pen they bought me, etc.) it's theirs. Or if it's directly related to their core business it's theirs. Note that this is separate from a non-compete.

The key thing is to find some clear dividing criteria that is 1. generous to the company and 2. within my control (like choosing to use my own machine). Same idea behind the "one person cuts, the other chooses" method of dividing a cake.

I'm never going to give a company all of my output carte blanche. I want to contribute to open source. I want to make little (unrelated) fun things on my own and not worry about being sued if it ends up becoming popular. The company has a reasonable fear of people competing against them while on their payroll. Both sides can reasonably expect some protection.

In the past, when I’ve tried to politely push back against these, the response has always been a firm “sign the agreement unmodified or GTFO.” When your employer has 500 lawyers, you do what they say or get back to the job hunt.

Yeah, if they're not going to let me have any say in matters that directly affect my ability to put food on the table for my family then I'm glad to walk. If your prospective manager isn't willing/able to go to bat for you on things like this it's a good bet they're not going to be willing/able to go to bat on lots of other things that matter while you are there. Not worth it.

Or, if they really are your only option at the moment, you can also sign with the intention of claiming you did so under duress if sued, but I'm not sure I'd be comfortable with that.

It's all about bargaining power

These "IP agreements", in my experience, include an "Invention Disclosure" section where you can submit a list of "inventions" that you developed before you took the position. It's supposed to be the blacklist of stuff explicitly excluded by the IP ownership agreement (i.e., you still own it since you "invented" it before you joined the org). Usually they give you a few lines to write these in. My approach has been to provide this as an attachment with an exhaustive list ranging from things I've actually developed all the way to mere ideas that could be realized in some form. Of course, every new time you have to sign one of these, the list should be longer. Each item should be broadly written; they can't be asburdly broad, like "Software to perform transformations on data", but you can undoubtedly find ways to make the item more specific to certain domains, and write in that annoying "cover your bases multiple times" form of legalese, e.g. "Tools, methods, and approaches in distributed and monolithic data aggregation, satisfying static and dynamic reliability constraints".

I reliably hear from HR or contracts that I'm the only one they've seen fill that section out, and certainly to the length I typically provide, but they duly accept it and execute the agreement. I've never seen them send to an IP lawyer or anyone else to screen the list for legitimacy.

Considering how challenging litigating technical IP claims is, I think this should have some amount of reasonable deterrent effect regarding threats or actual wanton IP theft litigation after leaving the org's employ.

In California, it is flat out illegal for an employer to claim stuff you've created using your own equipment on your own time. As it should be.

Many believe this is one of the reasons Silicon Valley became what it is.

...illegal, but with a loophole you can drive a truck through: if the employer thinks your project is close enough to what they do (or might one day do) it’s theirs. Beware!

But they have to prove this to a judge. The onus is now on them to prove that the thing is related enough to keep you from feeding your family.

I agree, but it’s you vs 500 lawyers. The company can afford litigation, can you?

Again, that loophole you cited is nowhere near as large as you think it is. Otherwise it would constantly be used.

That's crazy, copyright also counts as intellectual property, so technically you'd have to promptly communicate to the company almost everything that you write (I'm pretty sure all of your HN posts would qualify), every stick figure you draw, every song you hum (you have copyright on your performance). That contract forbids you from doing any creative work for a year after you quit (or are fired). I don't suppose that contract included a year's wages as severence pay?

I'm having fun imagining the malicious compliance that you could do.

Come to think of it, every email you write to them notifying them of new copyrighted work can itself be new copyrighted work...

It's not just a non-compete, it's a non-work. (Or more realistically, non-enforceable.) It's basically saying that everything you make in the first year at your new job after leaving belongs to the company. Uh... no.

That's so broad and so ridiculous I'm sure it's unenforceable. They basically want to own every idea, every bit of copyrightable IP produced by you during employment but for a year afterwards too! What dirtbag company did this?

I once got the the offer stage with IBM, and they wanted me to assign all rights to any invention or IP produced by me during employment, including on my own time. It's quite common apparently. I have side-projects I work on, and I specifically asked for an exclusion for them. They refused, and I told them where to stick their contract - even although I was borrowing money to pay the rent at the time. But I like to tell this story about IBM to everyone who will listen so other engineers don't waste their time applying. I hope I've personally cost IBM more sharing this story than they cost me in wasted time.

>and I agree that any such invention, discovery or item of intellectual property which I may disclose to anyone within one (1) year after the termination of my employment shall be presumed to have been made during my period of employment hereunder and shall become the sole property of the Company."

IANAL, but I read it differently from most other people, the accent is IMHO on the "disclose to anyone within one (1) year after the termination", even if you conceived the invention during the time you were employed, as long as you don't communicate it to anyone for 1 year after termination, you are fine.

Still - as I see it - the point of debate is more generally about the implied 24/7, there is a difference IMHO between something you invented (and developed) during working hours (and possibly utilizing the hardware/tools/resources of the company) and what one can invent (and develop) after hours, during weekends and holidays, etc., unless your pay is so high that it can be assumed to compensate for all your time.

Even then it seems more similar to slavery than anything else.

I've signed one once that had a clause where everything I made for a year after the job ended I had to approach them with it and give them a chance to offer me money for it (right of first refusal), but never anything where they automatically own it post employment.

They did have a 'we own pretty much every thought you have while you work here' clause, though, because it was a game studio and the owner's reasoning was you could have inspiration for game ideas for what you're working on pretty much anytime, anywhere...which he's right about, and he was a cool guy and I don't think he'd enforce the clause to actually steal other people's outside projects, but that clause still made me uneasy and I didn't really pursue my personal projects while I worked there much as a result.

But what you received is much, much worse.

I never believe excuses like that. They can just as easily write "we own any game ideas you come up with while you work here" instead of "every thought".

There's no reason to ask for what you don't need and never intend to enforce. Unless you intend to selectively enforce it, in which case I'll assume you'll select me to do so one day.

I'm not sure they said every thought specifically, but it included outside of work, and it wasn't limited to games. It was media and web, I think, since they did whatever clients asked them to do, make websites, mobile apps, booths at events, videos, etc.

Considering everything I work on personally was somehow web or media related, it felt very draconian to me at the time. But I still worked there and don't regret my time there overall.

> he was a cool guy and I don't think he'd enforce the clause

The problem with that kind of trust is that sometimes the person who makes the decision isn't the cool guy. It can be the company's lawyers who decide to make your life hard after termination for whatever reason (reduces your negotiating leverage at least), or someone else entirely if the company is acquired (for example).

It was a small business and he was very much the one who made decisions, in this particular circumstance. There were other employees who moonlighted a bit while working there and I don't think he ever pursued them.

But as I said, despite my comment about him being pretty cool about things, it was enough to make me uncomfortable, and I didn't work on my stuff much, and definitely didn't release anything while working there.

"I don't think he'd enforce the clause to actually steal other people's outside projects"

There is zero reason for him to have that clause unless he wanted to do just that.

It's silly and annoying, but I saw them crop up twice while looking for work two years ago. Both times it was non-negotiable - the justification being "we'd only use it to get back any work you took with you after leaving".

It seems like one of those "Oracle's doing this, so why don't we do it as well?"

Legally they probably can't get anything more than work they can show you took with you. Courts don't like the idea of telling somebody they are no longer allowed to hold a job doing what they know how to do.

Of course they probably don't need any signed document to get the above, odds are your local state laws are already strong enough to cover them.

That's my impression too. There are lots of existing laws and court precedence around regaining stolen company secrets; more than enough to fill the need.

I would totally DDOS legal with a deluge of stupid inventions.

Toilet which makes farting sounds when you flush it.

Spoon with a hole in it so you spill on yourself.

Mug without an opening (solid cylinder with handle)

Computer monitor that only displays the color pink.

Headphones with integrated q-tips

iPhone but its a triangle

Strap for swinging a chainsaw over your head like a helicopter

Porn. Lot of porn. And stuff related to country the US are not too friendly with, like Pakistan.

That would make their investors / bankers absolutely freak out.

"What is the 'Shariah Sexbot IP' and why is it on our balance sheet?"

I think I'd go a step farther and create web pages for them -- making sure to mention "the company" created them -- and possibly even send out press releases about them to local media.

This does not even pass the Sex Tape Litmus Test [1]. No sane person should sign this.

[1] http://www.laverick.org/sex-tape-litmus-test/

Strike it out and keep going. If it can't be striked out (such as online) just don't sign it. Probably start sending out your resume just in case they force the point, but I would not sign such an clause at all.

I managed to get a clause like this stricken once and I still regret taking the job. It turns out unreasonable contracts means unreasonable people and you want to stay away from unreasonable people.

Better to just tell them to take a hike and (ideally) name and shame the company publicly.

This was in a documentation package presented to me as part of a job offer, so it was easy to walk away from.

My wife had to deal with one of those, and it was abstractly written to the point of us paying a lawyer to read over it.

The lawyer had her fill out quite an additional bit of disclosure about it and did not like that clause. At the time my wife really wanted the position, but I doubt she would bother going forward with such a contract.

"or item of intellectual property made or conceived by me"

By this agreement if you wrote a hit pop song 11 months after your employment they'd own it. That's utterly ridiculous.

The "I assign everything I do" aspect is complete bullshit anyways. The post 1 year makes it greedy. Personally I would unprofessionally laugh at the contact person and then specifically call them out for that sort of crap. Swearing might/would be justified.

Is laughing that unprofessional? From where I am it seems like the clause is unprofessional and laughter might be the appropriate response!

It's not enforceable. However, in that post year if you "invent" something and they can tie it back to their business "somehow", they will come after you (maybe).

And that's really the big problem in my eyes (ignoring how ridiculous it is in and of itself.) I'd be opening myself up to a potential lawsuit. Even if it's deemed unenforceable I still have the hassle and legal costs to deal with.

That was exactly my problem.

I'm doing work in IoT, and I fully expected to retain that knowledge for the jobs afterward (for the record it was a job offer, not a current employer).

So this company could have really made my life a hassle if I quit them and went to work in a different field but was still doing IoT work. They could shut things down just to make life hard.

Yup. I work in medical devices, and a pretty niche area at that. When I left my previous company I joined a company doing essentially the same stuff, but at a much earlier stage. How could I possibly have done my job and also conformed to an agreement such as this? There's no way; I would have had to change industries.

Tell them that you will agree to it on the perfectly reasonable condition that they will be paying you a years full salary plus fifteen percent on top to cover the administrative costs of self management, in order for you to provide them this service following the termination of your employment.

The first part is stock boiler plate, one year after you leave? That is interesting.

Most companies simply don’t care, save for inventions directly in their field. I would think this would typically result in a contract dispute with your new employer, not with you so much. The new employer is going to claim your inventions, file various patents and such, then the old one tries to wave your employment contract around and lay claim to them? It’s interesting, I don’t see it being withheld in many courts though. They’d be on the back foot, at best, if the new company already filed invention paperwork. Was there a signing bonus or something to pay for these future inventions? Or gauanteed future pay when you file them? Maybe I’m wrong, most of these documents arent terribly enforcable as it is.

The one-year is for the disclosure of the idea/discovery.

So what this says is that they have IP on inventions you made while employed, even if you only disclose that invention after having left.

It does not say anything about inventions made after you left.

It says if you disclose an invention after you left it is presumed to be made before you left. So if you leave, make something, then disclose it, they will presume you made it, left, then disclosed it.

The thing that is "presumed to have been made during my period of employment" is "any _such_ invention, discovery or item of intellectual property", and the "such" here refers to "each and every invention, discovery, (...) made (...) during my period of employment".

It's pretty redundant and there could be a fight regarding when the invention was made vs disclosed, but the wording limits it to the period of employment.

Which state is this in?

There's a lot of stuff in contracts that are more scary / intimidating / best-effort-squeeze-of-the-big-over-the-small that isn't enforceable in many states. I'm no lawyer, here, though.

I can't see how it's enforceable that once you cease working there, everything you do for one year is presumed to be related and subject to the same work you did for the previous employer/Client. Also, that might imply that they'd owe you money, right? I can picture a judge turning to the counsel of this company and asking that question.

This language is very common in IP assignment agreements (often bundled together with restrictive covenants where enforceable). I don't love noncompetes, but assuming you plan to work in the tech industry with proprietary software or hard tech, you will have to get comfortable agreeing to provisions such as this. The purpose of the clause is risk allocation. If the employer has a dispute with you after termination, involving your alleged infringement of their copyrights or patents in violation of this contract, then this lowers the burden for them to show that you have breached your contract as they do not need to show factually that each element of copyright or invention was created or conceived exactly prior to termination. This obviously is unfavorable to employees, and if you can negotiate it then by all means do. But as a lawyer who has dealt with hundreds of similar agreements, I feel like a lot of the commenters may be overreacting.

Again, I don't like competitive restrictions -- I don't even like proprietary software business models! -- but if you are in that game, then this kind of risk allocating language is reasonable in that context. Refusing to sign a contract because of this clause means you are perhaps a closeted free software advocate (and good for you!) or do not really desire a long-term career in this (arguably exploitative) industry.

Refusing to sign a contract because of this clause means you are perhaps a closeted free software advocate (and good for you!) or do not really desire a long-term career in this (arguably exploitative) industry.

I have to disagree. I've had a long career in software development and I've never seen a clause this broad. If the clause was restricted to the term of employment, that would be one thing, but insisting that they own your brain beyond the time that they're even paying you is too overreaching to even consider.

That's not what the language says. The employer claims ownership of inventions conceived during your employment and requires you to disclose them for a period of time after your employment. For example, if there's an invention -- say you worked on LIDAR for self-driving cars -- and you were part of a team during your employment. Your employment ends, then you 6 months later file your own patent for a part of that technology. This language makes it so that the employer has a contract claim even though the patent application wasn't until after your employment ended. Conversely, it also protects the former employer from infringement claims arising from your post-employment patent that is allegedly based on their stolen secrets.

As an appeal to authority, take the Confidentiality and IP Assignment Agreement generated by Goodwin Procter's Founders Workbench. It contains a much more exhaustive (and better) definition of assigned rights, and the obligation to disclose them survives indefinitely. It also is rather more nuanced, so it might not be readily apparent that it in fact is a much stronger assignment clause than the one criticized by the OC.

Doesn't that make part of the agreement a tautology, though?

"I will promptly communicate to the Company ... during my period of employment, and I agree that any such invention ... shall be presumed to have been made during my period of employment..."

Wouldn't a simple assignment clause during the employment term be both clearer and provide the same rights?

Belt and suspenders. There should be an assignment clause -- if not, the agreement is totally defective! The assignment clause is of course the key part. But there are also further assurances, that make it easier for the company to "protect its rights" as it were. It's about risk shifting. If there's a dispute, how hard does the company vs the employee have to work to make out a claim and prove damages. The rationale for company-favorable clauses is that the company has more to protect, and has the same relationship with every employee -- thus an accumulation of risks. I personally have decided I no longer view proprietary software as an ethical business model, and I would never agree to assign my rights to such a company under most circumstances. But that is a personal decision that also makes me unemployable, ahah.

That is disheartening to hear. I've been doing software for over 20 years and I have yet run across such a provision in my employment contracts. I do not hold a strong ideological position on free software but if a potential employer asked me to sign something like that I'd just walk away. I do work on my own side projects, and the most I would ever agree to is that my side projects won't be in the same area or in any way compete with any of the products my company offers (easy for me because I don't work for a place like Google...).

The notion that a company owns you is just silly IMO. They make a big point of informing me once a year that I am employed at will and can be terminated at any time for any reason or no reason. So I am clear with them that outside of my work week, everything I do is mine. This is business.

I absolutely agree with you in principle. The language in question does not capture inventions you create on your own time with your own equipment, etc, as a matter of law. Copyright may be somewhat different but would need to view the entire contract -- a good one would include a carve-out for inventions, copyrighted works, etc., outside the scope of employment. This is typically where an employee should focus negotiating efforts -- not on the standard risk-allocating language, but on the carve-out. Personally I would never sign a noncompete, and I would never sign an invention assignment agreement except in a limited circumstance such as pledging a bit of software to a foundation to better enforce the licensing terms, that kind of thing. But then I am not ever going to be employed by a large tech company and have the luxury of my personal rules.

Your comment reads a little strange, if this kind of agreement is unfavorable for employees, makes it easier for a former employer to prove breach of contract, and contributes to an exploitative industry, why recommend signing it ? If we collectively as employees argue and refuse to sign such a clause, it will create pressure to make it go away. On the contrary if we sign it without a fight, the clause will spread throughout the industry, making it hard to negociate. I've been pursuing a career in that industry for several years, and I've successfully negociated that clause away when I came across one that I deemed exaggerated, and I encourage everyone to do the same.

I don't really see the link with free software either, preserving the right to use one's mind, the single most important thing a developer has, seems very important no matter what.

This thing seems stupid to me. Am I required to disclose such a restriction from a previous employer? I say no, since it's common in the industry and a prospective employer would be expected to either ask for disclosure or know it may exist. So now my inventions (assigned to my new employer by a similar boilerplate clause) are in violation of the previous agreement and if a legal dispute arises, they will now sue my current employer, who knowingly employed me despite this IP assignment and is in willful violation of the "previous employer's IP."

I've never once been asked if a previous IP assignment agreement of this sort is in force when taking a new position.

The disclosure of prior agreements is to YOUR benefit as the employee / contractor. A lot of employers treat this as sort of a nod nod, wink wink situation, where they know you have prior conflicting agreements and would rather not hear about them -- b/c proving knowledge of the prior restriction is an element of tortious interference, by which a former employer can go after the next one for the employee's violation of the old restrictive covenants. As the employee, by disclosing the prior restrictions, you may insulate yourself to some extent against claims by your new employer if there's a 3-way dispute. Yes, restrictive covenants are heavily abused and I wish we didn't use them so widely. But if you're asked to sign one, there are normal areas to negotiate -- but refusing to sign at all will prevent you from advancing very far in the proprietary software industry.

I have never been asked about IP assignment (and haven't really been in a situation where it would come up). But I've actually been asked about non-competes. (By a small firm which would have absolutely walked away if I had one.)

I don't think this clause is crazy. It feels poorly drafted but this is just a single section of the contract. Who knows if other parts influence the interpretation of this section. With that said:

The first segment of this clause is prompt communication to the company of works created. This is so that they'll know whether or not you're seeking IP protections over work-related projects which is reasonable. Nothing here states that disclosure to the company triggers any assignment of IP to them.

The second segment follows the "and I agree". It indicates that if you disclose work to another individual within a year of having worked at the company, they will assume you made it on their time. They are trying to put some teeth on the clause in the case that you hid the invention during your time at the company.

The issue here is that none of the terms are defined; does putting together a presentation count as the creation of intellectual property which is then disclosed, triggering the presumption? That would be absurd. Can the presumption that creation was done during employment be rebutted with evidence that it clearly is not exfiltrated company material? Etc.

Would help to see the entire document. Also I'm not your lawyer.

Be happy to forward it to you but the issue is moot now, the deal fell through. But I don't recall any other text that influenced this clause, it was just a paranoid expression of their IP as far as I could see.

So that second part: you say "if you disclose work to another individual"...which work would that be? Work that I performed for another employer after termination from the first? Or is that overthinking, and it means work performed for the employer but disclosed after the fact?

I had an ambiguous read about this, which is what threw up the red flags.

> What do you think?

When my last company got bought, they tried to throw that in for existing employees, but it was a 3 year time period. I refused. They said my job depended on signing. I know I could pursue a number of legal arguments as to why that wasn't valid, but I went with my own standard advice to not work with bullies, and I quit.

That would be constructive dismissal, and (certainly in many parts of the world) you could take them to an employment tribunal over it.

I worked at a company once that was bought and tried the same thing. I told them I needed a large compensation component to sign, and I never heard anything else about it. This was big company buying big company though, so it was probably boiler plate stuff.

I've seen similar clauses. I understood what the company was going for (they didn't want you to quit, patent the idea you had been working on, and then hold the company for ransom [I know, unlikely]) and suggested alternate wording but in the end we just struck the clause completely.

That was the spirit of the document as I understood it. Fortunately the deal fell apart before I got to this part, but I certainly would have crossed out the clause, or at least wrote in "inventions related to the business of the employer" to satisfy their paranoia.

Non-compete agreements like that aren't enforceable in every state. Check the laws of your state.

That isn't a non-compete clause. It's an IP assignment clause. For our profession that is effectively the same thing, but the legal distinction is important.

Totally agree. When your job is to generate IP, this stuff is kind of important.

Thanks!

You have got to be fucking kidding me. That’s insane. I’d never sign such a statement. That’s far worse to me than a non-compete, especially as someone who is always working/playing on my own time with various ideas. There are no boundaries for work time vs personal time, and it even tries to take ownership of other people’s work. Fuck that. I would absolutely laugh in the face of anyone who asked me to sign such a statement.

I'd have to be pretty desperate to sign such a thing.

Or maybe if they pay me 3 times the market rate. And that's without the "1 year after termination" craziness. For that, I'd ask continued pay (3 times the market rate, remember?) for the duration of the clause.

If this means walking away from a dream job, so be it. Can't be a dream job with such a clause.

Nope the fuck away. There is no justification for that. If they're going to push, make them pay an extreme amount for it.

Sounds crazy to me. I believe in California non compete clauses are unenforceable in court.

Always check with a lawyer, but I wouldn't sign it.

Ghost them.

Reply on news.ycombinator.com