garys@bunkerb.UUCP (Gary Samuelson) (09/02/83)
Here's a topic that I would like to see discussed
in net.legal: Patent agreements of the type generally signed
on the first day of employment.
I am now working for my third employer, and have been asked each
time to sign two agreements upon starting work. One promises that
I will not disclose proprietary information of other companies to
my new company, nor disclose any of my new company's proprietary
information to other companies, and the other promises to assign
all rights to anything I develop (patents, copyrights, and ?) to
the company.
I have no problem with the first agreement (non-disclosure). But
I have problems with the second, part of which I quote:
To assign to Company ... whatever right,
title and interest I may at any time have, throughout the world,
in and to each invention and any application for Letters Patent...
which is first conceived or first actually reduced to practice by
me or at my direction, solely or jointly with others, during the
term of my employment with Company, except that this agreement to
assign shall not apply to an invention for which no equipment,
supplies, facility, or trade secret information of the Company was
used and which was developed entirely on my own time, and (a) which
does not relate (1) to the business of the Company (2) to the
Company's actual or demonstrably anticipated research or development,
or (b) which does not result from any work I perform for the
Company.
A similar paragraph deals with copyrightable material.
First, it seems all-encompassing. I am being asked to sign away all
rights to anything I do while employed by this company. The exceptions
do not seem to provide an adequate protection, for the following reasons:
(1) The phrase "equipment, supplies, facility..." seems to mean that if
I wrote something down using a Company-provided pencil, OR if I
was in the Company cafeteria, that this would give the Company
ownership of whatever I wrote.
(2) Since the company I work for is rather large, that which "relates
to the business of the Company and to the Company's actaul or
demonstrably anticipated research or development" could be almost
anything. "Demonstrably anticpated research" especially.
(3) "Resulting from any work I perform for the Company" is likewise
vague. I learned most (not all) of what I know about 'C' and
UNIX (tm) here. Does that mean if I write anything in or about
'C' or UNIX that it belongs to the company?
Second, there is no 'quid pro quo' (Latin phrase meaning that if I
give up something, I should get something in return). The agreement
itself does not stipulate that the Company will do anything for me
in return for assigning these rights. And to those who say that I
get a job in return for this agreement, that isn't actually true.
I get paid a salary for performing work. My salary is therefore
compensation for my time, not my rights. Additionally, the offer
letter which I received (which I understand to be a legal document)
did not stipulate that it was conditional on signing such an agree-
ment. The offer did contain one condition; to wit, that I must take
a physical examination at company expense, which might be another
interesting topic.
At my previous company, I questioned this agreement, and obtained
an amendment to the effect that certain specific software products
I had in mind to develop on my home computer (that's as much as I
can say without disclosing MY trade secrets) were not covered by
the patent agreement. This does not appear to be an adequate
solution, for two reasons:
(1) I have to disclose my trade secrets to the Company in order to
get the amendment. The legal department wants specifics.
(2) This doesn't cover anything which I may later conceive. Do I
have to get another amendment every time I think of a product
I might develop? If so, do I have to wait for the Company
legal staff to go through their time-consuming procedures before
I can start development?
I find it hard to believe that I am the only one to question this
type of agreement. Has anyone refused to sign? Can a company
really require such a thing?
Tired of signing away my rights...
Gary Samuelson
ittvax!bunker!bunkerb!garysmark@umcp-cs.UUCP (09/03/83)
Regarding quid pro quo for company patent agreements:
I signed one of those things, and lo and behold there was a patent,
and the vice president for engineering came down and in a minor
ceremony handed myself and the other 3 inventors one dollar each
for our patent rights, after which we signed the patent over
to the company, and he shook our hands.
--
spoken: mark weiser
UUCP: {seismo,allegra,brl-bmd}!umcp-cs!mark
CSNet: mark@umcp-cs
ARPA: mark.umcp-cs@UDel-Relay