sdo@u1100a.UUCP (Scott Orshan) (02/10/84)
[]
What does the following really imply? Our employer has given us this
document to sign in return for a dollar.
I'm sure many of you have seen such forms, but I was wondering what the true
legal meaning is. Am I really signing away as many rights as it appears?
I'd be curious to see summaries of other companies' agreements (not
the whole thing, please) and any first hand facts regarding enforcement
of such agreements, either successfully or unsuccessfully. There must
be a lot of people out there who have left big companies to form small
ones, or become consultants.
Also, can I be forced (as a condition of continued employment) to
sign such an agreement? (Not that I would ever consider not signing -
does :-) have any legal weight?)
Employee Agreement
Regarding Intellectual Property
IN CONSIDERATION of my employment by CENTRAL SERVICES
ORGANIZATION, its successors and assigns ("CSO"), the payment to me of
the sum of one and no/100 dollars ($1.00), and other good and valuable
consideration:
1. I hereby assign and agree to assign to CSO, its successors
and assigns, all my right, title and interest in and to all
inventions, discoveries, improvements, ideas, computer or
other apparatus programs and related documentation, and
other works of authorship, (hereinafter designated
"Innovations"), whether or not patentable, copyrightable or
susceptible to other forms of protection, which during the
period of my employment by CSO or by its successors in
business, I have made, conceived, created or developed,
either solely or jointly with others, in the course of such
employment or with the use of CSO's time, material, or
facilities, or relating to any subject matter with which CSO
is or may be concerned.
2. I further agree, without charge to CSO, but at its expense,
(a) promptly to disclose any such innovations,
(b) promptly, upon request, to execute a specific
assignment to CSO of all rights, title and interest
to such innovations, including property rights
arising from patent applications, and
(c) to do anything else legally and ethically required to
secure patents, copyrights or other forms of
protection for such innovations in the United States,
and in other countries, both during and after my
employment.
3. I further agree, that I will keep in confidence and will
not, except as required in the conduct of CSO's business or
as authorized in writing on behalf of CSO, publish, disclose
or use, or authorize anyone else to publish, disclose, or
use, during the period of my employment and subsequent
thereto, any private or proprietary information which I may
in any way acquire, learn, develop or create by reason of my
employment by CSO.
Scott Orshan
CSO, Piscataway
201-981-3064
{ihnp4,allegra,pyuxww,abnjh}!u1100a!sdodya@unc-c.UUCP (02/11/84)
References: u1100a.550
Another question w.r.t. Scott Orshan's article: Could they keep you
from earning a living in your trade/profession ? I have been asked to
sign a similar paper where I work, and it seems that many (but not all)
things that I do are (or should be, anyway) things which should be flagrantly
obvious to anyone skilled in the art.
Of course , consenting adults can agree to anything which is legal,
and execute a contract, just because a contract is burdensome to perform
is not (at least, in NC) a defence to get out of it.
Perhaps you could negotiate (through your employer) towards an
"Agreement to Noncompete" in the specific area of your employment. Also,
I would DEFINITELY put TIME LIMITS on the contract, say, 5 years. Anything
which is really patentable or copyrightable are protected under appropriate
federal law anyway.
Scott, I would be interested in any responses you get.....
--David "Last of the Analog" Anthonymcmillan@eosp1.UUCP (John McMillan) (02/13/84)
The form quoted, which protects the employer's rights to inventions, discoveries, and trade secrets, looks pretty ordinary to me. The point is that while working for your employer and using his facilities, you are making discoveries for your employer, not for yourself. Some of the terms of this agreement remain in force after you leave this employment, and again they seem ordianry and reasonable: - respect your former employer's trade secrets (very successfully enforced in the courts) - continue to assist your former employer to obtain patents pending, at the employer's expense. - Toby Robison allegra!eosp1!robison decvax!ittvax!eosp1!robison princeton!eosp1!robison (NOTE! NOT McMillan; Robison.)
geoff@proper.UUCP (Geoff Kuenning) (02/13/84)
Employment agreements such as this one are common, although the more enlightened ones explicitly give you the right to keep inventions you make on your own time, sometimes even if they relate to the company's business.
avi@pegasus.UUCP (02/14/84)
Scott Orshan asks: What does the following really imply? Our employer has given us this document to sign in return for a dollar. [followed by the agreement] Just be happy they gave you a dollar!!!!! I remember being asked to sign something similar one or two companies ago (it gets confusing when you move from Bell Laboratories to American Bell Inc. to AT&T Information Systems without leaving your office) without being promised any monetary compensation. Does this mean that our agreement was not legally binding? I am disturbed by some of the wording of these agreements. I wonder what this means about one of the (former?) employees in my building who was arrested for (allegedly (put in to please the legal types in this group)) doing some spying for the chinese in his spare time. He did not have access to our sensitive information, but was getting "military technology" from elsewhere. Does ATTIS own any such information that he gathered? From the way such documents are written, maybe they do!!!!! -- -=> Avi E. Gross @ AT&T Information Systems Laboratories (201) 576-6241 suggested paths: [ihnp4, allegra, cbosg, hogpc, ...]!pegasus!avi
govern@homxa.UUCP (Bill Stewart HO 4K-437 x0705) (02/15/84)
For the most part, the CSO Intellectual Property Agreement is reasonable - any work you do with CSO's resources belongs to them. Back when Bell Laboratories was Bell Laboratories, we had to sign about the same thing. (And they didn't even pay us $1.00 :-) ) My main concern, which several other people have brought up when this topic last came up, is "What happens if you develop something they want, using your own resources?". The prototype example, which is more a problem at ATTIS than at CSO, is personal computer software that you write on your own time. The last phrase in paragraph 1 of your agreement ends "... or relating to any subject matter with which CSO is or may be concerned.", and this might get you in trouble. Bill Stewart, AT&T Bell Laboratories -- The .signature file of Bill Stewart and/or the "govern" group account
sasw@bnl.UUCP (Steven Akiba Swernofsky) (02/19/84)
Re this question --
Another question w.r.t. Scott Orshan's article: Could they keep you
from earning a living in your trade/profession?
I haven't seen Scott's article, but employee "agreements not to compete"
are generally unenforceable. Almost all states hold that the only time
an agreement like this can be enforced is when it is attendant to a sale
of a business, where the seller agrees not to start a similar business
in competition. (Even so, the agreement must be reasonable as to time
and place.) New York allows them only if the employee is "special,
unique, or extraordinary" -- and you practically have to be a star
athlete to qualify in that category.
-- Steveminow@decvax.UUCP (Martin Minow) (02/21/84)
The Swedish Engineer's trade union negotiated a general-purpose intellectual property agreement with the employeer's federation which, as I remember it, divided "inventions" into three classes: 1. things which directly pertain to your job function: the employeer owns these outright. 2. things which are part of the employeer's business, but which are distinct from your job function. (For example, you work on transistors and invent a disk drive head positioner.) You must report these to your employeer, who is obligated to pay you the going rate for the invention if bought outside. Your employeer does get first refusal. 3. things separate from the employeer's business. (As above, but you invent a new fishing reel.) You own it outright. One thing in the quoted agreement that seemed new was a phrase "anything developed using your employeer's resources." This would suggest that if you hack a computer game on the weekend, it would be the employeer's property. (And they could sue you for misuse of computer time.) Or, am I being paranoid? Happy hacking. Martin Minow decvax!minow
mark@cbosgd.UUCP (Mark Horton) (02/21/84)
2. things which are part of the employeer's business, but which are distinct from your job function. (For example, you work on transistors and invent a disk drive head positioner.) You must report these to your employeer, who is obligated to pay you the going rate for the invention if bought outside. Your employeer does get first refusal. How is "the going rate" determined? Seems like the employer can make up any number they want, they have you over a barrel. Does this only apply to situatios where the companies resources are used? That is, if you do the work at home using your own equipment, does the company have any claim to it?
minow@decvax.UUCP (Martin Minow) (02/23/84)
In my note on the Swedish employee agreement, I noted that it distinguished between inventions which are part of your job function and those which are part of the employer's business but distinct from your job function must be reported to the employer, but you must be compensated at the "going rate." Mark Horton asks how the going rate is determined. I would suppose arbitration (and/or union involvement) in case of a dispute. I don't know what the union has to say about use of company time or property. I signed the agreement about 12 years ago and don't remember *all* the fine print. Martin Minow decvax!minow
seifert@ihuxl.UUCP (D.A. Seifert) (02/23/84)
Re: union involvement
I believe that the vast majority of engineers and scientists
in the US are *not* represented by a union. (Someone correct
me if I'm wrong) What's the situation in other countries?
Off on a tangent discussion topic: Do we need/want a union?
Do we need/want something similar to the Lawyer's Bar Association
or the Doctor's AMA?
This should get some lively discussion going!
--
_____
/_____\ "Happiness is a warm puppy"
/_______\ Snoopy
|___|
____|___|_____ ihnp4!ihuxl!seifertmats@dual.UUCP (Mats Wichmann) (02/26/84)
.
.
As a followup to Mark Horton's question (alas, I don't claim to be an expert
on this either) -
There are usually two parts to this - development using the company's
resources, and development resulting from work you have done for the
company. I.e., if you do some work that teaches you about a certain
subject, and this knowledge later assists you in making a discovery,
(while still employed with the company) the company may claim rights to
this discovery.
What I understand from talking to some people who have gone through
lawsuits after changing jobs is the following:
EVERYTHING is extremely difficult to prove on the part of the employer.
The one, almost global argument that gets nearly everyone off is that
the information obtained while working for the employer is NOT proprietary;
i.e, substantially the same information could have been gathered during
employment for a different company. This usually seems to take care of
the invention disputes, and almost totally squashes the non-competitiveness
clauses in employee contracts. Above all, no one can deny you the right to
make a living; only if you are trying to make a living off of information
that is totally, undisputably, prorietary information of a company you
have worked for previously can your rights be restricted.
I would be interested in hearing more comments from people who have been
sued after changing jobs -- this is a very interesting subject, and
important to a lot of us. Think about it - how many of the UNIX programmers
out there have not been approached about changing jobs, to a large extent
because of what you have learned for the company you work for now???
Mats Wichmann
Dual Systems
{ucbvax,amd70,ihnp4,cbosgd,decwrl,fortune}!dual!matskevin@unisoft.UUCP (03/05/84)
For those of you in California, these are some things that I remember: (I may well be wrong. Please correct me if you know better) 1. Non-Competition: You cannot be restricted from competing against your employer by virtue of an employment agreement unless that agreement also is for the sale of a trade or business. You cannot waive this protection and you must be affirmatively told of its existence in an employment contract. (Many employment agreements that I've seen do it by referencing the Cal. Civ. Code ###, which doesn't mean snot to most people) (CA Only) 2. If you go to court, the employer will carry the burden of proving that you swiped his/her intellectual property (naturally, since they are the plaintiff). In addition, since you are a poor helpless individual against the nasty interests of big business, doubtful questions of fact will likely be held in your favor. 3. In general, what you take out the front door of an establishment in your head is yours. What you take out in your hands is the employer's. Moral: Have a photgraphic memory. Note that this has obvious limitations. 4. An employer cannot require you to grant rights in all you invent during your employment (CA only, again). He/she can only require that you hand over that which you invent on company time using company equipment. If you invent something in your garage on your own hours, even if related to the company business, you're ok. This right cannot be waived by the employee as far as I know. Intellectual property laws vary from state to state. California is very "progressive" about protecting employees in the hi-tech industry. Whether this encourages pirating, employment-mobility or exchange of ideas is any- one's guess. I'll try to look in UniSoft's copy of the "Computer Law Reporter" and see what else I can find, if anything. (Again, I make no promises any of this info is truly correct.)