9

I understand that this question has probably been asked many times before but, every contract is different.

Anyway, due to my company being taken over by another, we are being issued new contracts, everything is fairly standard but I just wanted to get peoples impressions on one particular section.

You must tell us about any inventions or creations that you make during your employment that could be used in our business as they belong to us. You recognise that all intellectual property rights in all such inventions and creations shall automatically, on creation, vest in the Company absolutely and you waive any moral rights you may have. To the extent that they do not vest in the Company automatically, you hold them on trust for us and assign all rights future and present irrevocably to us. You agree to do all things that we ask you to do to ensure that such inventions belong to us.

I understand that anything I create on company time or using company equipment automatically becomes company property, and I have absolutely no problem with that.

My issue is with the first sentence

You must tell us about any inventions or creations that you make during your employment that could be used in our business as they belong to us

Does this mean that if I create an app at home, in my own time and on my own computer, that my employer can claim that it is theirs if they believe it would be beneficial to the business?

4
  • 3
    From that sentence alone, the answer is yes. It is the property of your employers. However if they're not useful, why tell them?
    – Twyxz
    Jun 6, 2019 at 12:02
  • 1
    Does this mean that if I create an app at home, in my own time and on my own computer, that my employer can claim that it is theirs if they believe it would be beneficial to the business? -- based on the provided text it sure seems like it. You must tell us about any inventions or creations that you make during your employment that could be used in our business as they belong to us.
    – Neo
    Jun 6, 2019 at 12:03
  • 10
    At this point, I think you need an actual lawyer. That wording is vague but broad enough that the scope of what it claimed is not "obvious". Jun 6, 2019 at 12:06
  • 2
    That's what it says. Whether it will hold up in court is another matter. There are some rights you can't legally sign away and depending on the laws in your jurisdiction, this may be one of them. Jun 6, 2019 at 12:07

2 Answers 2

10

Yes and no.

You must tell us about any inventions or creations that you make during your employment that could be used in our business as they belong to us

If your activities outside of work are related to work (e.g., if you build a game at home, and you work as a game developer), your employer has a basis to pursue ownership.

If your activities are different than what you do at work, then your employer has no basis to assert ownership (e.g., if you build a go-kart, and you work as a game developer). Even if you're an app developer, if you develop an app at home (e.g., a photo-filter app), but it doesn't do anything related to the apps your build at work (expense reporting software for business), then your employer would have to go through a lot of trouble to prove ownership.

You have an opportunity to engage some judgement as well since your contract relies on self-disclosure. If you don't think your hobby is related to work, you have no obligation to make anyone at work aware of it.

You should take care to not use work resources for any at-home activities though (i.e., don't use your work laptop to work on your hobby app).

3
  • 1
    Playing Devil's Advocate here. If you define the reason for a business' existence is to make money, then anything the OP makes that can be monetized by the business could belong to that business, regardless of the field. EG You create a world class game app at home and the business suddenly decides that it wants to be in gaming (think Flappy Bird). IMHO your answer is assuming that there is a well defined wall between business and non-business activities when that wall is not mentioned at all in the text that the OP provided.
    – Peter M
    Jun 6, 2019 at 13:53
  • @PeterM, I think the timing would make a distinction as at the time of creation it was not of value to the company. I believe that would weaken their claim of "used in our business", if it had been useful to the business at the time then OP could have chosen to do something different which could have been protected.
    – cdkMoose
    Jun 6, 2019 at 16:20
  • @cdkMoose The issue I see it is the word "could", which is so vague that you could (pun intended) make it apply to anything. You write the next Flappy Bird and the next thing you know you'll have lawyers piled up deep on both sides debating the definition of that one word, because again there is no absolute limit specified in the contract as to how far in the past "could" applies. EG the revenue you made on your app could have helped us expand into new markets [last month|last year|two years ago|etc] and tripled our companies size.
    – Peter M
    Jun 6, 2019 at 20:02
5

Does this mean that if I create an app at home, in my own time and on my own computer, that my employer can claim that it is theirs if they believe it would be beneficial to the business?

Yes. That's what they're saying. If you're a salaried employee, then anything you create (until your contract ends) belongs to them.

More unusually though

You must tell us about any inventions or creations that you make during your employment that could be used in our business as they belong to us

They want to be told about them. It's still valid, though.

You have 3 choices

  1. Sign and forget about it, unless you do create something. In which case you should abide by the agreement you have signed.

  2. Dispute the validity of these clauses and either have them removed before you sign, or walk away from the job.

  3. They "bought" your company? Go and research "TUPE", as this kind of change is classed as "unfair dismissal". Get legal advice.

It really comes down to whether you think this will materially affect you. Are you really going to create something of value to your employer whilst not being paid for it, or make a note of it and start work on it after you've left.

1
  • The best advice in the case of takeover is - speak to a lawyer that specializes in these types of things. Ideas are the main commodity these days, you can implement everything if it can be financially viable. after you have an idea it becomes resource / profit equation. IMHO you should be able to monetize your idea on your own or sell it for profit / market share and not being dismissed by default.
    – Strader
    Jun 6, 2019 at 16:04

Not the answer you're looking for? Browse other questions tagged .