Uncoupling your IP before launching?

October 13th, 2016

I work in advertising and my employment contract states that any concepts I create belongs to my company. Easy when it's a campaign for a client. Not so easy when I've come up with a business idea that doesn't compete with my employer but is still technically theirs. I've been open with my bosses and the general counsel, and outright asked them for permission to pursue this venture in my own time -- risky strategy I know, basically giving them a sense I might left them at some point to go out on my own.

But to date I have not heard back. So if anyone has gone through this before I'd love to hear your thoughts on how to safely proceed.

Does their silence constitute acceptance that I can continue?

Do I even need to, legally, gain permission when it's not for an existing client and not in their industry?

Is there a way to push them for an answer that doesn't encourage them to block me out of sheer bloody-mindedness?!

Thanks in advance.

Salomon Serfaty Senior Lecturer at Ruppin Academic Center

October 13th, 2016

I was with a multinational company for a very long time being the senior technical leader for one of its subsidiaries. I have dealt with the problem you describe on behalf of the company in a large number of occasions.

From my experience, all IP developed by you belongs to the company.

My involvement normally was to assess that the technology the employee wanted to develop on his own was not in anyway linked to any technology the company was involved with or had interest in. If this was the case, then the employee will be allowed to develop it on his own. Under the legal department advice, the employee will write a letter stating that after having conversed with legal and the pertinent technical authority on such and such date, and determined that there was no conflict, he/she would proceed with his development and/or IPR pursue.

Yet, the company never gave any written consent to the employee.

So the solution in our case was kind of "grey" yetI do not recall a case where this was put to a reality test.

Christopher Stanton Attorney at Merchant & Gould

October 13th, 2016

The answer to your legal question requires talking to an attorney, preferable one with experience in employment contracts and IP. Whether you are obligated to assign your works to the company depends on a lot of factors including: the employment contract, state law, your position, the work you created, the work you were hired to do, etc.

The business risk question is a different one. Are you willing to move forward with a business that relies on property that may not belong to the business? Depending on the employer, the risk that your employer takes an interest in the IP is (likely) directly correlated to the success of your business.

Looping back to what you want from an attorney, you want her/him to come up with a solution that mitigates that business risk.

Selvan Rajan

October 14th, 2016

No company would give you a written consent. You would be better off if you have these two bases covered:

1. Make sure that the technology that you develop is nowhere near what your employer is doing

2. Never ever use the office time, material, computers etc., for this development

Another way to do this to become a consultant to your current company. This changes your relationship with your company and they cannot claim anything that you do after the office hours. Many people in Silicon Valley do this approach. Still, the above two suggestions are more important.

Gordon Troy Trademark Attorney - United States and International, Copyrights, Unfair Competition, Internet and Computer law.

October 13th, 2016

Christopher is correct. You need to discuss the specifics of your situation with an attorney representing your interests. The starting point is looking at the contract and understanding the specific facts in more detail. Clearly the goal is to minimize the risk, and that requires someone who has specifically dealt with these issues and understands. Having represented both employers and employees in these types of matters, the specific terms of the agreement, which jurisdiction the agreement has for choice of law, the laws of the jurisdiction (State), and where you are located are critical in understanding the scope of the restrictions. Please feel free to reach out to me directly to discuss further.

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