Ask HN: What to put in 'declaration of prior inventions'

5 points by arunpn123 8 years ago | 2 comments

I am about to start a new job in California and employer wants me to sign this form. I dont have any patents but my side-projects are in the same domain as in the job. So I am concerned about what to put in there. I also have planned to build something in the coming months on the side. Should I also list that in the 'prior inventions' form? The advice I find on the internet is conflicting. What happens if I list something and the employer tells me to stop working on it even though it is not conflicting?

hmahncke 8 years ago |

IMHO, you should discuss it with your employer.

Declaration of prior inventions in my experience is typically used to exclude work you've already done from being covered in your invention assignment form, by which your employer generally owns anything you invent while being employed.

If your side-projects are in the same domain as your job, and you're signing any kind of IP assignment form, you should probably clear that with your employer, and accept that you'll either (1) get a waiver from them, (2) stop working on your side projects, (3) be in a world of IP pain when your side project and employer's project come into conflict, or (4) get a different job.

Github has a model agreement that protects your side-projects, if your employer agrees: https://github.com/blog/2337-work-life-balance-in-employee-i...

Of course, IANAL.

arunpn123 8 years ago | |

Thank you for the reply. The employer sent me an FAQ that says to be on the safe side, just list the item on the form and I can work with their legal team after joining, in case I need more clarification.