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Ask HN: How Do I Protect Personal I.P. from My Employer's Acquiring Company

5 points by c8ion ↗ HN
A large software company is acquiring my current employer. During my very long stint (by Silicon Valley standards) with my current employer I've conceived of, worked on, evaluated, and partially documented some potential startup ideas on the side. I intend to continue developing these for possible future personal gain.

These ideas have little relation to my current employer's business, but a few of them are close to some of the larger company's product offerings. Close enough that a product manager with some imagination could see integrating a couple of my ideas into their current offerings. So ... what should I do to protect my past and future efforts?

I'll soon need to sign an Inventions Agreement with the new company, along with a Schedule of Separate Works. I will be listing in the schedule formal work I've done for previous employers, listing patents and patent applications, etc. I intend also to list a brief description of each idea I'm considering for the future and indicate on the schedule that the "company" with which I've done this work is my own personally registered Fictitious-Business-Name "company". Should this be sufficient? How important would it be to document these conceptions before formally starting employment with the new company?

I imagine working code would the best documentation, but most haven't reached that stage yet. Some of the ideas are just "sketches" in my mind and on random sheets of paper -- is it possibly already too late for those?

2 comments

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e1ven
I know this isn't what you want to hear, but you should go see a local lawyer, and bring the the documents from NewCo with you. The exact wording matters, and it's not something an internet forum can help with ;(
grabeh
The problem is that when an idea is in the embryonic stage it's often difficult to pin the central elements down that may be protectable. As you allude to, when you have something tangible like code then you are in a much stronger position. It may not be too late for your ideas, but by the same token you may not actually have anything to protect.

On a wider point, much depends on what your new employer will think of the fact you are working on side-projects that may compete with its own ideas. Regardless of who came up with the idea first, they may not want a new hire to be working on similar projects when their energy could be directed at the company's own similar project.

Of course they may be perfectly happy for you to continue but it's of course vital you properly map out that work done on your own time will not belong to the company. In this regard, as the other poster says, you would be well-advised to speak with a local lawyer.