Can a company own intellectual property created off the clock? In an employment agreement, can a company claim intellectual property created off the clock unrelated to your their core business? Specifically if their core business is in a narrow domain of software, can they claim to owning all intellectual property created by the employee at all times outside of that domain but within &quot;software&quot;.
united-states If they have a contract with the employee which specifies that such IP is assigned to the company at creation, such a contract is valid until and unless a court holds that it is void. It might be held void as against public policy,. or as being &quot;unconscionable&quot;, but it might well not be so held. An even broader contract, which claimed any and every kind of IP created by an employee, even if crated during off hours and not at the work site nor with company resources is more likely to be held void, but even this is not certain to be held void. In the absence of a contract explicitly assigning such IP to the company, the company might attempt to apply the rule that makes works created by an employee within the scope of employment works-made-for-hire (WFH). This is in 17 USC 101 (the definitions section of the copyright law). This would affect copyrights, but not patents or other IP. There is very little US case law interpreting the &quot;scope of employment&quot;. But there seems some reason to believe that work that was not assigned by the employer, not intended to benefit the employer, not used by the employer, not done within usual working hours nor using company resources, and not of the specific type normally assigned to or carried out by the employee, is probably not &quot;within the scope&quot; of the employee's employment. If that is so, the work would not be WFH, and only an explicit written contract, signed by the employee (or the employee's authorized agent) could transfer the copyright.
Be careful of the 10% time “perk”. It is not your own time. It is work time where you are self-directed. Any project unrelated to your work should be on your actual own time not dork time that is free of specific assignment. Fortunately the section 39 of the UK patent law is short and relatively straightforward. It is focused on “the course of your usual duties” not on whose time you were on or whose equipment you were using. It belongs to them if - (a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or (b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer’s undertaking. Otherwise it’s yours. See https://www.gov.uk/guidance/the-patent-act-1977/section-39-employees-inventions-right-to-employees-inventions
The relevant section of US patent law was already posted in an answer on one of the questions you linked, but I'll repeat it: 35 USC 271 (a): Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent. Merely making a patented invention is infringement; it isn't relevant whether you sell it. It is also infringement if you use it yourself, regardless of who made it or whether you paid them, or whether you would have otherwise bought it from the patent holder. There are some special exceptions for things like certain kinds of pharmaceuticals, but I browsed the rest of 35 USC Chapter 28, and didn't see anything that would appear to be relevant in this case.
Yes, they can do that, as long as they tell you about it in advance. Your employer can require you to take all or any of your holiday at a particular time, as long as they give you the right notice at the right time and take into account certain agreements between you. Source Employers can: tell their staff to take leave, eg bank holidays or Christmas restrict when leave can be taken, eg at certain busy periods The notice period for this is at least twice as long as the leave they want their staff to take. Source (official government site)
Critique I'm technically a director of a company ... You either are or you aren't - there is no "technically" involved. ... is not currently trading ... And doing nothing can create a conflict of interest? How? You mustn’t be involved either directly or indirectly with any other trade or business competing in or conflicting with the interests of our Company. "competing or conflicting" is the key here - if the "other trade or business" can adversely affect the performance of your employer then you have a conflict, if not, you don't. are only related in such that they are both technology based but otherwise are unrelated. Sorry, but that is so vague as to be totally useless - what company today is not "technology based"? Pharmaceutical companies are technology based, so are construction companies, so are law firms but one would hardly call them "related". Solution Conflicts of interest are easy: If you don't think you have a conflict of interest and they don't think you have a conflict of interest then you don't have a conflict of interest. If either or both of you do; then you do. Tell them about it! Conflicts of interest are a problem because people think that if you are keeping secrets then you are doing it for a nefarious purpose! In 90% of cases declaring the potential conflict resolves the conflict because the other party says "That! Don't be silly; that's not a problem!" or words to that effect. In the 99.9% of the remaining 10% of cases then sensible people can come up with sensible solutions, for example: If you want to be involved with another business whilst working for us then you’ll need to get a letter from the Director of your area confirming that they’re happy for you to do this.
You need a lawyer There is no magic phrase to do what you want. The company will care about defending their assets, while you will want to defend yours. Only a lawyer will be able to tailor the condition that makes sense based on what your job's domain covers and your side projects. It is entirely possible that your personal projects conflict with your employer's, and you must then put your personal projects on hold or risk getting sued. e.g.) developing two pieces of software that does the same thing. Your lawyer will be able to advise on how that looks and what to do. No random strangers on the internet can give you accurate advice.
That is a very broad clause, broader than the default US rule for copyright, for example. (I know the question asked about the UK, I just happen to know the US copyright rule.) It would seem on the face of it to include independent research on a subject totally unrelated to the person's employment, done off the company's premises and not during normal work hours, but while the person was an employee.. Indeed it would arguably include the copyright to a novel written off premises and during off hours. Use of "course of employment" (instead of "term") would improve the provision. so would "as a part of his or her employment" or "closely related to the subject of his or her employment". Another possible restriction would be "Using the Company's facilities and/or equipment, or during normal working hours". However, my experience is that an employer will have drafted whatever language it uses through its company lawyer, and will be quite unwilling to alter it in any way. A prospective employee will probably be faced with a take-it-or-leave-it choice unless that person is a nearly indispensable figure to the company. One could send the company a certified letter saying, "When i signed the contract agreeing to {company language} I did not intend to include any developments made off company premises, not using company equipment, and unrelated to the subject or scope of my employment. I retain full rights to any such developments." Such a letter would help establish that there was no meeting of the minds to assign such non-employment-related developments or IP to the Company. How much weight it would have if the rights to such developments were the subject of a court case I am not sure.
You cannot use a patented invention without permission A patent gives the owner exclusive rights to use it: not just profit from it. The only way you can use their patent is by licensing it. You cannot make any version of the software that uses the patented method, free or otherwise. Technically, the software you have now is infringing even if you never release it. If you had published your work before they filed for the patent, you can seek to have their patent invalidated due to the existence of prior art. If you had been using it privately prior to this some jurisdictions will allow you to keep using it privately.