Intellectual Property Rights

[jason_nevin]

I have designed a software package based around an Access Database at my company (based in the UK). There is a good chance that the company will be able to sell the software and potentially make a handsome profit.

My boss wants me to sign an Intellectual Property Rights agreement. Does anybody know what this means? Which of my rights does it effect? Would it prevent me from developing the same software if I left the company?

Any help would be much appreciated. I've found some resources on the web but they seem to apply mainly to music. Just wondered if anyone had had a similar experience.

Cheers.

 

[ghudson]

I have no legal experience in what you question but I can say with confidence that your company owns the rights to anything you developed/designed/created if you performed the work while on company time and used company resources. They are asking you to sign away your rights to ensure that you do not try to sell it or use it somewhere else. Just to be sure, you should consult a paid professional legal advisor if you feel that your company does not own the rights to the db.

 

[The_Doc_Man]

I am unaware of the legalities in the UK regarding intellectual property rights, but I agree in general with GHudson on the meaning of it all.

In the USA, GHudson would be absolutely correct. If you developed something on a company computer as part of your normal job (or even as part of a special assignment), you got paid for your work already when you cashed or deposited your paycheck. If the company wants to develop it with or without you, they can - because they already own it. This happens to fall under the US Code regarding "copyrights" and "work for hire."

Here in the USA, we often have to sign a generic intellectual property rights waiver as a condition of employment, particularly if we are going to be in a creative position. Check your employment documentation (I hope you kept it!) to see if you signed something like that already.

In the UK, you would need a copyright specialist to advise you of the actual rights in question, which might differ considerably from U.S. Code on this subject. However, based on my somewhat limited understanding of USA Common Law, which is derived from British Common Law: If you sign a particular type of waiver document dealing with the intellectual property represented by the program, you will in essence waive any future claim to the program AND ITS ASSOCIATED TECHNOLOGY. Which means you would not later be able to sue them for a share of any profits they might reap from such a sale.

Further, if their corporate lawyers are worth tuppence, they will include a non-disclosure clause in that waiver agreement that will effectively bind you either for X number of years, X > 5 as a certainty, or in perpetuity. You would not be able to later re-invent this particular wheel on your own or for another company because of that agreement.

The intellectual property rights involved here are two-fold.

First, who owns the program you wrote? The company wants to own it outright so they can legally sell it without you claiming ownership (thus, the sale is called an "unencumbered" sale or a "free-and-clear" sale).

Second, who owns the design? The company wants to own the design, too, so they can prevent you from going into competition with them down the road if your relations with your company become a bit ... rancorous.

 

[jason_nevin]

My understanding is that in UK law its pretty straightforward that if you work for a company they own the copyright to anything that their employees design as part of their normal role. I have no problem with that at all. My question is effectively what does IPR do that isn't already covered by copyright? Is it just a belt and braces approach to copyright?

What I'd also like to know is how far the IPR goes in terms of copyright. The system is unique to the industry that it relates to which is a niche market. Would the IPR preclude me from developing the same type of product even if I used completely different code, forms, reports etc. i.e what is actually copyrighted; the idea or the code?

Thanks for your replies thus far.

 

[neileg]

As has been suggested, under UK law your employer owns the IPR in anything you design in the course of your employment. Any agreement will simply seek to clarify the position and is a routine 'belt and braces' approach. However, you should be careful that this does not seek to limit your ability to produce similar products once you leave the company, but read on.

Copyright is a way of protecting the IPR in a product. Providing nothing has happened to remove the right to copyright, e.g. publication of the full code, or a detailed explanation of how it works, then the owner (your employer) can protect the IPR using the copyright laws. This protection applies whether or not you continue to work for the company.

If you developed a similar product, either in your own time or after ceasing to be employed by the company, there is a chance that the company could pursue you for breach of copyright. You would have to demonstrate that your new product was unique and distinct from the old one, and that you had not used any of the code you developed while employed by the company. Frankly, this would be very difficult to prove.

In practical terms, you don't have a lot of choice, but you should take professional advice on the wording of the document to make sure it doesn't attempt to broaden the rights of the company. For instance, you don't want to sign away your future rights to develop any form of software, regardless of what it does, do you?

 

[Darth Vodka]

out of interest, has anyone ever heard of anything going to court (in England & Wales, sorry i'm not bothered about Scottish or US law) with regard to intellectual copyright for Access/Excel/VBA

?

 

[statsman]

Sounds like a situation where a visit to a solicitor specializing in copyrights etc. is in order.

A small investment now may be worth a great deal of money down the line.

 

[GaryPanic]

coming in on the end of this ,

How bespoke is your product /idea

Access is a third party product in this case - its your coding - that they are tryng to protect ,
as with any coding you could rewrite this in a different way ...


get some proper advice - but I don't think it will stand up in a court of law
basically I could write a formula in excell and try and copyright it -

should you disappear and start a simliar product change the layout format etc enought to be completely different

also ensure that there is a time clause in your contract say 6-12 months after which you can do whatever you want , otherwise they will have to pay you for not working

courts in the UK - look at this cases , and if the clause will stop you from earning a living then they might invalidate the clause -unless you have straight forward copied it