Ask HN: UK Intellectual Property clauses in employment contracts

5 points by whamill 14 years ago | 7 comments

I'm a software engineer in the UK and I have signed an employment contract with what I assume is standard IP section for the UK: everything I create while working for the company; every idea I have whether written down, exploited or not; every new IP I may invent during the period of my employment [inside and outside hours] - all rights belong to the company in so far as legally possible.

My understanding is that this is a 'normal' IP clause in UK employment contracts added to specify that on top of the statutory presumption that all copyright rights will vest in the company, all moral rights will also vest in the company as far as possible.

My concern here is that as the contract is not prescriptive about any restrictions to this land-grab, any work I do by myself on the side or for any other person or organisation will also be covered. For example, if I came up with and exploited an invention for some new application by myself, or released it as open-source, or was contracted to do by another company, all the IP rights will still vest in my main employer (even if the area of invention is totally unrelated).

What I want to know is what kind of IP clauses other UK software industry employees have, how they feel about how restrictive [or not] they are, and what my actual options are if I wanted to create something in my own free time.

ig1 14 years ago |

Not as far as I've seen, standard UK contract is typically has something along the lines of IP created "in the course of your employment" (i.e excluding unrelated work).

Although if you're working on particular open-source or startup projects on the side you should just get a specific clause inserted into your contract which excludes those projects.

whamill 14 years ago | |

That's what I recalled from when I read through it before signing (evidently not in close enough detail...)

However, the phrasing is: "any invention wholly or partially made by the Employee at any time during the course of his employment with the Company (whether or not during working hours or using Company premises or resources, and whether or not recorded in material form)."

Which does seem pretty open-ended :(

ig1 14 years ago | | |

"during the course of his employment" restricts it to works made as part of your work duties. Obviously this can fall into vague territories though if your day job is in anyway related to your side projects, so I'd still recommend you get a specific exclusion for any side projects.

chris_dcosta 14 years ago |

There is another approach which is equally as effective given you signed this some time ago.

You can ask the company to confirm that you are allowed to work on the outside project and that they do not consider it to be a conflict of interest.

My partner for example is working for a large corporation, and in her contract it expressly forbids being a director of another company. I wanter her to be the director of one of mine for family reasons, and she obtained a written confirmation that this was agreeable to her employer.

This effectively changed - or rather updated - the terms on which she signed her employment. There's no reason why you could not do this too.

As long as what you are doing is not within the general scope of activities of your employer then a release like this is not that difficult to obtain.

adrianhoward 14 years ago |

I wouldn't so far as saying that it's "normal" - but I've seen contracts like that. I've never signed them :-)

If you want to know what you can actually do - you need to show your contract to a lawyer. The scope of the land grab may not be as bad as you think depending on the exact language used. Some of the land grab may not be legal, depending on the language used and your exact working arrangement.

And next time please, please read, understand and possibly amend the contract before you sign :-) It's just about the strongest negotiation position you'll have. When they want you and you haven't signed.

whamill 14 years ago | |

Yes, hindsight is a wonderful thing - I signed this 3.5 years ago fresh out of university and didn't pay enough attention to the small print, I realise that now - I'll contact someone in the legal profession that I know for a more qualified opinion.

As to it being normal, most of the friends of mine who went to work for medium to large enterprises say that they've got the same type of clause in their contracts. From what I've read it appears that employers are typically recommended to make their phrasing as wide-ranged as reasonable.