Advice from HN: I'm about to be fired because I declared prior IP months ago.
I'm also recently employed by a prominent company in the field. Talking about my experience in the field is what got me the job.
Several months ago, when I signed on, I got the standard "list your prior IP" form. I listed my side-project IP. I got the "I'll have to clear this with some people..." response from HR, then heard nothing. 3+ months pass, until this week. Seems we have a problem.
From what I've heard, there are two issues:
1. Due diligence of an acquiring company would find the simple act of me having this IP "too risky." IDK why, as I'm not claiming any of the company IP and the contract stipulates that if I inject my IP into their business they are granted a perpetual non-exclusive license. Seems fine to me to simply list it.
2. If I were to develop this product, it could theoretically compete with the company's product. It would only do this under the broadest sense of the field we're in. I can kind of understand this. They are still worried though, regardless of if I actually develop the product, that my simply having the IP makes this too risky. Seems as if they WILL NOT have me with the IP listed, regardless of non-compete clauses or whatever.
So, my options or potential outcomes as I see them:
Don't list my prior IP on the paper, keep my job. (This isn't the company's stance, but I assume I would retain claim to the IP via my papertrail of work from well before I started the job if I really need to prove it eventually).
List the prior IP, they "don't hire me" (despite me having worked there for months) and I'm de facto fired/quit.
List the IP, pitch them in the meeting, and have them acquire the IP. Work for the company to develop the product. (This would be an extremely unlikely scenario, don't even want to think about terms right now).
Somehow convince them that the product is far enough away from their product that it isn't a conflict. It sounds as if this will be unlikely as well.
Eff, this sucks. How do any companies expect to acquire domain experts without some prior IP baggage they've picked up along the way?
Someone talk me through it. Like I said, I love the field. I love the company. I love my side-project. Can't I just keep doing it all? :(
11 comments
[ 3.7 ms ] story [ 35.0 ms ] threadWorst case, you quit, are fired, or sell them your project.
I think you should see if they'll buy your project, and if not quit or be fired.
I'd go to a lawyer if they tried to claim ownership of your project, which they don't seem to be doing.
Of course, IANAL, and neither is my parent, which may answer my question of "why?"
Your lawyers will show you how to do this nice and legal.
good luck.
IANAL, but I think you should just quit. This is not ethical behavior on their part. If you go along with what they're asking, you're essentially abandoning your IP rights, in exchange for nothing but continued employment. I wouldn't want to work anywhere that even asked me to do that.
Yes you can and should consult an attorney, but if the situation turns adversarial, you might as well quit.
IP-related conflicts of interest are a real problem for anyone with entrepreneurial aspirations who nonetheless needs to take a traditional employment position. I think the best policy is to avoid working for companies whose businesses have much overlap with one's own plans (I have done this on occasion myself).
Yes, that probably means taking a less interesting job, possibly even making less money, while you work on your project on the side.
The suggestion someone made to sell your IP to a holding firm is a very interesting one, but I don't understand the implications. That company will somehow need to defend its IP rights at some point -- at least, the way this is going, that outcome seems likely -- and I don't know how it's going to do that, unless you can get a patent filed in a couple of weeks. Even then, to litigate a patent you need money.
It's more than possible I'm missing something, so maybe you should look into that option, but my initial reaction is not too optimistic.
Thus, I don't know what happens when they now say "we can't approve that." Is it still a 'condition of employment' that I sign it? Even if they gave me the job without themselves signing it? Can they just "not hire me" or would they have to fire me or would I quit or....
You have put your IP at risk by starting work without receiving a signed copy of the prior IP form. Yes, you were going on the assumption that everything would be okay, but in a situation where you know you have IP that overlaps theirs, that was naive.
I still think you should quit. For one thing, if you continue to work knowing that they're not accepting your prior IP declaration, you are tacitly accepting their non-acceptance, a point that could work against you if this went to court. But beyond that, the only leverage you have in this situation is the value of the work you're doing for them. If you continue to work, you're giving them what they want without appropriate compensation. If you want to negotiate a licensing arrangement for your IP, you'll never do it while you're an employee; the only hope is to make it a condition of your return.
Don't take this advice without running it by an attorney, but that's what I think. (It's possible, for example, that instead of quitting outright you should simply refuse to sign any other prior IP form, and let them fire you. But I would always rather be able to tell my next employer that I quit, rather than try to explain why I was fired.)
Here's another consideration. They've as much as told you that they're trying to get acquired. You don't know who the acquirer will be or what kind of management they will have. Whatever difficulty you are having getting your IP rights recognized now will be squared in that situation.
BTW, if money is tight for you, you should immediately start looking for another job -- one that won't have this kind of problem. This advice you should take in any case, because looking is free and has no downside. If you can find something else quickly, you'll be in a much better position to negotiate with your current employer.
If you get to fill in the form again, declare yourself as a director of the company /you will form/ to hold your IP. That's all, do NOT list the IP. The IP baggage is then not with you, per se, but with the Ltd company you created.
Sounds like my perfect nightmare, I hope this resolves itself!
good luck
I would suggest that you put together a moderately short memorandum of the facts. You will need a time line, dates and names of attendees of meetings, summaries of what happened at each meeting and what happened. If you keep an appointments diary, copy out the relevant pages. Collect copies of all the employment documents. This will save time and money if you need to go forward. In the future, when you have a meeting with anyone involving this, write a memorandum to the file recounting exactly what happened with quotations, agreements, action items, etc. Keep everything factual and avoid editorial content and presumptions of intent.
Check your employment and intellectual property agreements. I suspect that your employer does not have approval rights on your excluded intellectual property declaration. The purpose of that declaration is to make the company's job simpler--they claim to own everything you did not exclude--and since it describes your intellectual property prior to the point of employment, they have no say in its content, you own what you own. I can imagine a situation where the company might ask for a clarification of what you are excluding, but they really have no right to challenge the substance. Moreover, I further suspect that the fact that they did not come back to you in a timely fashion and that they went ahead and employed you immediately would be interpreted as _ipso facto_ agreement that the declaration was an adequate description of your excluded intellectual property.