The Miserable State of Intellectual Property Clauses in Developer Contracts
exratione.com
exratione.com
And I mean it, how EXACTLY have you changed your employment contract to reflect this. I've asked about this before but not received a straight answer so instead of giving opinions about quiting our jobs and go work in a place where this magically does not happen let's all gather here, think about it and write up a convincing clause, then go with it to our employers and demand we have contracts changed, or when negotiating a new job offer. It's easier to give them a piece of text they can review and copy/paste than a vague request of "I want rights", and letting them figure it out for you.
So, if you have a concrete example you have used successfully, please post it below, together with the country. I'm interested in UK specific clauses mainly but write about any country really.
13. Intellectual Property Rights
13.1. During your employment, you will promptly disclose and deliver to us for our exclusive use and benefit or the use and benefit of any other Group Company full details of any Inventions upon the making, devising or discovering of the same (whether alone or with any other person, irrespective of whether they were so made, devised, or disclosed during normal working hours or using the facilities of any Group Company). You will irrespective of the termination of your Employment, give all information and data in your possession as to the exact mode of working, producing and using the same and will also, at our expense, give all such explanations, demonstrations and instructions to us as the Board might deem appropriate to enable the full and effectual working, production or use of the same. You will treat all Inventions as Confidential Information of $COMPANY and/or any Group Company.
13.2. You will, without additional payment to you (except to the extent provided by Section 40, Patents Act 1977 or any similar provision of applicable law), whether or not during the continuance of your Employment, at our request, at our expense and to the extent that such Intellectual Property Rights fail to vest automatically in $COMPANY, promptly execute and do all acts, documents and things necessary to vest the title in all Intellectual Property Rights in $COMPANY or our nominee absolutely and/or to enable us or our nominee to apply for and obtain any or all applicable Intellectual Property Rights, in each case in any or all countries relating to any of all Inventions or other materials produced by you during your Employment.
13.3. You acknowledge that, because of the nature of your duties and the particular of your responsibilities arising from the nature of your duties, you have, and shall have at all times while you are employed by us, a special obligation to further the interests of $COMPANY.
13.4. You:
13.4 (a) shall hold each Invention on trust for $COMPANY and/or any Group Company until all rights to such Invention have been fully and absolutely vested in $COMPANY in accordance with the remaining provision of this clause 13;
13.4 (b) hereby assign with full title guarantee by way of present and future assignment all copyright, design rights and all other Intellectual Property Rights, title and interest in each Invention (if any) for their full terms throughout the world;
13.4 (c) hereby assign to us by way of future assignment with full title guarantee (insofar as title to them does not automatically vest in $COMPANY as a consequence of your Employment subject to clauses 39-43 of the Patents Act 1977) all copyright arising in any original material (including source code and object code for software) and all other Intellectual Property Rights produced by you in the course of your Employment, whether during our normal hours of business or otherwise, or at the premises or using our facilities or otherwise, for the whole term of such copyright including any extensions or renewals thereof and including the right to sue for damages and other remedies for any infringements of the copyrights; and
13.4 (d) irrevocably and unconditionally waive all moral rights conferred on you by Chapter IV, Part I, Copyright Designs and Patents Act 1988 and any other moral rights provided for under the laws now or in future in force in any part of the world arising from any such original material so far as you may lawfully do so in our favour and for the avoidance of doubt this waiver shall extend to the license and successors in title to the copyright in the said material.
13.5. You hereby irrevocably appoint us as your attorney to do all such things and execute all such documents as we may require to ensure that we have the full benefit of this clause 13.
13.6. You will do nothing, whether by act of omission and both during and after your Employment, to affect or imperil the validity of any Intellectual Property Rights obtained, applied for or to be applied for by us or our nominee. In particular, you shall not disclose the subject matter of any Inventions which may be patentable to any third party before we have had the opportunity to apply for any patent or patents for that Invention. You will, at our discretion and expense, promptly render all assistance within your power to obtain and maintain such Intellectual Property Rights or any application for any extension of them.
13.7. Nothing in this Agreement obliges any Group Company to seek patent or other protection for any Invention or to exploit any invention.
I did my normal 2 minute Google search and found pages which suggests IP falls to the employer if created by the employee "as part of their normal duties"[1][2].
Also, I found one site[3] which has this explicit Q&A:
Q. So how do I know if a contractual provision is enforceable?
A. I’ve got three words for you – restraint of trade. Contractual terms that are in restraint of trade are not enforceable at all. For your employees’ contracts that means not drafting any IP clause too wide to ensure that your back is covered. Too wide and the clause will have no effect.
[1] https://www.shoosmiths.co.uk/insights/articles/who-owns-what...
[2] https://www.barkerbrettell.co.uk/protect-your-invention/
[3] https://www.saplaw.co.uk/uk-legal-services/tax-private-clien...
One thing that is true regardless of whether they are enforcible or not, is that these clauses are present on my employment contract, and I have signed that contract. If they are not enforcible then why are they even there, I should get them removed, but I can't just go to them and blindly ask them to remove something like this, reason why I've asked the question above.
Given the current state of my clauses, what changes could/would you do to them to remove the unenforceable parts and clarify in written and signed contract, once and for all, without any doubt remaining, that code written outside of work is my own property?
By the way, I appreciate your linked references, thank you for sharing those with me.
Also, I am sure I'm not the only person in the world that has struggled with this, that's why I asked for concrete examples of employment contracts that were written or changed to address this. Surely somebody has managed to get a decent clause drafted.
13.8. $COMPANY and any Group Company will not attempt to claim copyright, intellectual property rights, nor patent right to any creation done outside of working hours (also known as employees free time), outside of the premises, and not using any $COMPANY facilities, as long as any such creation does not relate to the employees current responsibilities, and as long as it does not directly compete with $COMPANY business model and business activities.
13.9. As long as you do not go against clause 13.8, you are not obligated to disclose to us your creations.
How does this sound?