Commercial company wants me to list all prior "inventions", give up everything not listed [closed]

Question

I'm a post-doctoral researcher in computer science, but my next position will be in industry. I've been negotiating a contract with this commercial company to do R&D work (not while I'm employed at a university). It's been a negative experience overall, because - like many companies - they did not write their draft contract themselves, nor gave it serious thought, but had some lawyer draw it up (without seriously reading it afterwards).

Not going into all the horrors of what the IP part looked like - here's a bit of it:

"Invention" shall include but not be limited to improvements, designs, discoveries, developments and works of authorship or artistry (including without limitation software, integrated circuit, printed circuit board or computer design, and documentation).

... (etc. etc.)

I have attached hereto, as Schedule 1, a complete list of all Inventions to which I claim ownership and desire to remove from the scope of this Agreement, and acknowledge that such list is complete ("Prior Inventions")

and basically they get to own everything else.

This may (?) be just fine for people who move from employment in one commercial company to another and never feel the need to publish anything or have rights to develop anything independently - each company makes you essentially say "you own everything" and then they can dish it out amongst themselves. But - it obviously won't fly if you're involved in continuing research - earlier, in an academic institute and now independently, outside the scope of your commercial employment, and/or if you're writing free software. I've had lots of ideas, notes, open ends of other work, talks with people, etc. which may be developed further - in addition to things you've actually published or registered in any way. I can't just recite all of them - nor do I want to tell the company all about them.

My question is about how to deal with this situation, or perhaps - how indignant I should be about it. Some options:

• Just strike out that section of the contract and explain to them it's an unreasonable request.
• Try to tweak the wording so that the list isn't wholly definitive ( <- A bad idea IMHO)
• Write a list, but add items which are general and vague to represent half-baked (or unbaked) stuff, sort of catch-all "inventions" you could later claim cover actual things you pick up on.
• Give in, write down some sort of a list and hope they don't go after you.

Suggestions with concrete examples are especially helpful.

Notes:

• It isn't just this one company, I've seen similar contract drafts in several places already. It's not like this everywhere, but I don't want to have to rule out workplaces just because they are careless about their contracts (that is, assuming they don't actually want to suck you dry of your independent contributions).
• I have no problems rewording this part of the contract whichever way I like, so I'm not asking for help with reading or writing "legalese" here.
• I'm not in the US (and I don't want to make this question country-specific).

Answer 1

I work at an R&D company that has a pretty similar clause in its contract, and in fact most R&D companies will.

The core reason is that things change quickly in R&D, so an area that the company has no interest in today may be a big part of their in business in 5-10 years. Moreover, employees like you are likely to be the ones who create new business areas like that, and if they don't put in a very broad clause, there's nothing to stop you from taking work you've done at the company to a competitor or spinning off your own company (see, for example the fights going on over self-driving tech).

So, what should you do? Well, it really depends on the reason for your objection.

• If you've got moral objections to IP being controlled by companies, don't work in commercial R&D.
• If you want to keep contributing to existing free and open software projects, put that down as a general reservation in the "prior inventions" section. Most reasonable R&D organizations will accept that in some form (though it may take a bit of back and forth on the wording), since for most companies that's never going to be their competition.
• If you want to be able to pursue new side projects: embrace the clause! Don't think of it as "the company wants to steal my ideas" but instead as "the company might want to pay me to do my side projects". In a healthy R&D organization, what you do with a potentially commercially interesting side project is essentially give them "right of first refusal" -- and if they don't want to support it, then it's yours.

Now, unhealthy organizations are a whole different story, of course, but there's lots of better reasons you wouldn't want to work for one of them in any case.

---

Adding in a clarifying note based on the comments:

While we can't know for sure without seeing the full statement, what has been shared, however, doesn't actually say the company is claiming all prior works. Instead, it appears to follow the usual practice of clarifying which IP the company agrees cannot be claimed, due to their origins in prior works. Prior works not listed, if they come into dispute, just have to have their origin established in other ways (e.g., scientific publication, date-stamps in metadata).

Answer 2

My question is about how to deal with this situation, or perhaps - how indignant I should be about it.

I suggest that you start by simply bringing it up for discussion with the hiring representative, and explain your point of view and what kind of leeway you are looking for in terms of freedom to work on side projects, whether academic or related to open source projects, that are unrelated to your regular company work. Good communication is your best bet in my opinion - if they have a good understanding of what you’re asking to change in the contract and why you’re asking to change it, I’d think they’ll be more inclined to make concessions. And if they still won’t, maybe the place is just not a good fit for you.

Some additional thoughts:

1. You ask how indignant you should be. IMO an emotion like indignation doesn’t belong in this situation. Somebody offered you a contract with certain terms, you are free to negotiate or ultimately refuse to accept the offer. It may be frustrating, but I don’t think these terms are unfair or immoral ones.

2. Another thing I think you shouldn’t do (certainly not in your discussions with the company, and perhaps not even on this forum which is after all public and easily associated with your name) is make dismissive claims about how the company didn’t give the contract serious thought, or are careless about their contracts, or that even the lawyer who wrote the thing “didn’t seriously read it afterwards”. At least the part that you quoted proves nothing of the sort. Based on the information you gave us, to me it seems possible that the contract says precisely what they want it to say, even if it is objectionable to you. So basically what I’m saying is, when you raise your objections with them I suggest doing it in a respectful, emotionally neutral way that doesn’t imply the people you’re dealing with are stupid, careless or incompetent.

Good luck!

Answer 3

There's going to be a bit of jurisdictional aspects of this, but in the United States these types of agreements are fairly common as part of work for hire agreements when intellectual property is being created (e.g., software development, engineering, artistic works, etc.). I'd have to see the full scope of it, but it seems like it is a fairly standard template that effectively says:

Any intellectual property created during your employment or inspired by your employment, and relevant to your job, is property of the company.

There's not much you can do to get around that intent.

Likewise, the scheduled list of prior inventions is to protect both of you in the case things go to court (i.e., you can point to the schedule as evidence that an invention existed prior to your employment and was not inspired by it). There's also not really much you can do about that either since not listing things puts you at legal risk (i.e., prove you came up with this before your employment).

So really the amount you can push back is going to depend on how much they want to hire you. Best case is if you are working on a narrowly defined problem you could modify the agreement to say something like, "Both parties agree that work after DATE related to PROBLEM SPACE is a result of employment by COMPANY and all inventions are the sole property of COMPANY." Obviously that would prevent you from starting a new company with a product in that product space, but might save you a lot of time enumerating a bunch of other work you've done.

If you've worked in the space before you are really just going to need to sit-down and write out the list. Or decline the job offer.

Answer 4

I've been negotiating a contract with this commercial company [...]. It's been a negative experience overall [...]

I wouldn't expect things to get better once you're hired. I'd keep looking for other jobs instead.

PS. This should be in workspace.se since this is not a question related to academia per se.

Answer 5

I have my doubts that they will compromise much unless they really, really (did I say "really, really" enough?) want you. If they are paying you gigantic money for your mind, then you may want to accept. But I would probably want to look elsewhere.

I think that such clauses, while, perhaps, not quite so blatant, are pretty common. The company does, in fact, have an interest in keeping IP that you develop with their assistance, in any way, from being exploited by others if you leave.

So, I think your concerns are very justified. Among your bullet points you might be able to negotiate a bit over the wording of your third point, but you are likely to fail on the others.

If they employ such lawyers, then the WILL go after you and put a lot of resources behind it. And they will probably laugh if you try the first point.

---

Mostly, however, people in such companies are allowed to publish things. I know some folks who publish a lot and have such agreements in place. But patentable ideas are another matter altogether.

For a young researcher, who is involved in research and ideas that are potentially patentable, I suggest that you employ a strategy that can save you in such situations. I learned this from a researcher at IBM. Create a "Patent Book" for yourself. It needs to be a bound book, not a loose leaf collection. You should probably create a new one each year. In the book you write down the essence of any potentially patentable idea that you have. You date the entry and sign it. You get a trusted colleague to also sign the entry and date the signature. Don't let any significant time elapse between the signatures. write in pen on good paper. Do not ever erase anything in the book or you will invalidate it.

Now, if you need to establish priority on any idea, you have evidence, with dates and with witnesses.

And if you need to make a list of prior art for a future employer, you also have the basis for one that is very difficult to counter. But all of the above elements are necessary. The record needs to be immutable (ink, paper, no erasures) and witnessed (with dates).

Also note that while you are employed, anything you put in such a book can probably be claimed by the employer. And the dates in the book and the dates of employment are evidence they can use. You really do give up all rights to your IP. But after you leave, new ideas not represented in the book during employment are also, perhaps a bit protected from claims by the company.

Finally, for such a company, also look to see what the non-compete clause looks like and how long it extends past your leaving the company. Some will claim perpetual ownership of your IP. That can possibly be challenged in court in some places, but doing so is an expensive proposition. Beware and be forewarned.

Answer 6

Typically -- despite the "acknowledge that such list is complete" language -- failing to list something on the Exhibit does not mean that your prior inventions are assigned to the Company.

The actual language of the assignment clause governs what Inventions the company is claiming. Usually that clause will cover all Inventions which are conceived, discovered, reduced to practice "in the course of your employment" (or sometimes the broader "while I am employed by the company") and so would not cover prior inventions. The exhibit is provided as a way for you to very clearly exclude things you've done previously from the agreement and is particularly useful when you've created inventions in the past which are similar or in the same line of work as you'll be doing for the company. If you don't include it on the list, but you've invented it in the past, the invention probably does not belong to the company although you might end up in a situation where you have to prove that you invented it earlier (with, e.g., lab notebooks, emails, patent applications, other contemporaneous evidence dated before you started work). If an invention is on the list, then you can probably avoid that whole issue of proving you invented it earlier, so it's good to list things you think might be related to what you'll be doing for the company.

Answer 7

I often encounter boilerplate (template) contracts with clauses that are a problem. Usually you can work around them.

In this case they want a list of work that i claim for myself. So that's exactly what I'd do. I would aim to be reasonable and my goal would be to let them have the problem instead. Which is fair, its their contract after all. I answer it as best I can, and then shrug, I can't answer it any better.

So my own approach would be, to boldly add to the bottom of my own list, like this:

[Item of work]

[Item of work]

[Item of work]

Any works or ideas which I have conceived, worked on, undertaken preparatory work for, or been involved in, prior to commencing this employment, and to which I retain any ownership or rights at this time.

Any works or ideas undertaken outside this employment, or in other previous employments or capacities, or undertaken as a result of my own personal choice and not as part of my work duties, or arising after this employment ends, or to which I retain any ownership or rights at this time.

They will probably object, and I'd shrug and say, "You asked what I claim, I can't provide an absolute list. I'm a PhD in Computer Science with X years experience and a ton of hobbyist and other work. [Optional: I do coding and creative ideas 18 hours a day, 365 days a year, since I was a kid. That's what you're hiring me for.] I must have worked on tens of thousands of ideas in that time. If you need me to waive or sign over rights to certain specified agreed works, such as works in the course of my duties, I can do that. But I can't possibly list all I've already done, every last item, in my entire life, so if you ask for what I claim that's the honest best I can do."

They might not engage you. But most likely they'll scratch their heads and consult internally, and see the problem (which is a real one, and of their own making since its their own contract). Maybe they'll suggest a way around it if faced with an actual honest answer.

You actually have a quite serious second problem, that you might not know what you own rights to, or which ideas are yours, and should be claimed. That's because typically any previous employer will have broad terms about ideas you invented while there, or related to.work. Unless each of the possible wisps and creations of hours during your working life is tested in a courtroom, you have no idea for most of them, if they are indeed still yours to be claimed, or legally belong to some past employer. The scope to certify incorrectly is huge - and you may accidentally certify things you cant or shouldn't. To be honest, these kinds of clauses might be universal, but this particular variety that says to list anything claimed, and claims the rest, is unanswerable as written. You might well need to accept that.

They might decide not to engage you, or try and pressure you. But if they see the problem but insist on a list of specifics only, that you know you can't do, then its an impossible contract for you to sign anyway, so no loss.