What is the extent of this &quot;invention&quot; clause in this contract? OWNERSHIP OF WORK PRODUCT, IDEAS, INVENTIONS, DISCOVERIES AND TRADEMARKS I shall promptly disclose to (COMPANY) all ideas, inventions or discoveries, whether or not patentable, which I may conceive or make, alone or with others, during my employment, whether or not during working hours, and which directly or indirectly: relate to matters within the scope of my duties or field of responsibility during my employment by (COMPANY); or are based on my knowledge of the actual business or the actual or anticipated research and development of (COMPANY); or are aided by the use of time, materials, facilities or information of (COMPANY). The following paragraphs can be read here. (pastebin) Hello. I hope you can provide some advice on my situation. This is a part of my employment contract. I have omitted the name of the company. My location is NJ. I work as a cloud engineer. Recently I've been thinking about a particular app/business idea and I've been putting some time and effort into it outside of work (weekends, or in the evenings during the week). Since I would eventually like to implement this idea as a website / web application and utilize cloud technology in doing so, could this mean my employer owns the idea and anything I develop --since I would use the same technology for my idea that I do at work? Even though it is completely and utterly unrelated to the business model of my employer and I have not used work hours in my implementation of this idea? Would this also mean that any open-source software I develop outside of work automatically belongs to my employer? What is the extent and limitations of such a clause, which I have agreed to?
could this mean my employer owns the idea and anything I develop --since I would use the same technology for my idea that I do at work? No, unless by &quot;technology&quot; you mean the employer's materials or resources (see condition 3 of the clause). Your remark that &quot;this is completely and utterly unrelated to [employer's] business model&quot; survives items 1 and 2. Likewise, working on your idea outside hours survives the corresponding part of item 3. Would this also mean that any open-source software I develop outside of work automatically belongs to my employer? No, unless the software you develop is &quot;based on [your] knowledge [etc.] of (COMPANY)&quot;.
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
This could be a problem if the consultancy agreement contains a provision that assigns to the client any copyright in any code created by the consultant. That is why there should be no such provision. In the absence of such a provision, the consultant owns the copyright in the code, so it would be impossible for the consultant to infringe that copyright. Even so, copyright protects a particular expression of an idea, not the idea itself. The idea of an "analyze data" class containing a "read data" function is not itself subject to copyright protection. It could potentially be patentable as a "process," but it would fail to meet the criterion of novelty. It would also fail to meet the criterion of non-obviousness. On the other hand, a software developer cannot (without permission) copy source code that is protected by copyright simply by changing the names. Changing the names would constitute the creation of a derivative work, and the right to create derivative works is also protected by copyright.
I'm not familiar with the case you're citing, but it sounds like this may be an application of the doctrine of &quot;inevitable disclosure&quot; or &quot;inevitable use.&quot; A classic case would go something like this. WonderWidgets has discovered that by treating its widget molds with a teaspoon of ground cinnamon, it can create a superpowerful widget that is impervious to normal wear and tear, and will last forever, with very little additional expense. To protect its competitive advantage, WonderWidget takes all sorts of measures to ensure that AAA Widgets never learns about the benefits of the cinnamon additive. WonderWidgets hires Jane, an engineer with a PhD in cinnamonology to make improvements to the additive. She signs a confidentiality agreement promising to protet the company's trade secrets. After a year with WonderWidgets, Jane is recruited by AAA Widgets. WonderWidgets sues them both to prevent them from consummating an employment relationship. Assuming that the information Jane acquired from WonderWidgets is a protected trade secret, the idea here is that everyone knows exactly why AAA is hiring Jane, and that it would basically be impossible for Jane to work for them without applying the knowledge she acquired from WonderWidgets, i.e., there her employment would lead to an inevitable disclosure of WonderWidgets' trade secrets. I think most people would agree that there's at least a reasonable argument to be made in favor of WonderWidgets, there are also efforts to apply this doctrine in much shakier circumstances. For instance, WonderWidgets might try to prevent its janitor from going to work for AAA because it taught him how to mop floors, and it has cleaner floors than AAA, and therefore its cleaning techniques must be superior, and therefore those techniques must be protected. There are some states in which WonderWidgets would win the cinnamon case, and some where Jane would win, because the state doesn't recognize inevitable-disclosure at all. I don't know of any states where WonderWidgets would win the janitor case. Of course, most cases are not as clean-cut as either of these hypotheticals, but I'd say the one you're asking about is closer to the second one than the first.
In Germany, there is no concept that corresponds directly to public domain. You automatically hold the Urheberrecht (~ copyright) for all creative works that you make, and it can't be given up or transferred (§29 UrhG). The work only enters the Gemeinfreiheit (~public domain) 70 years after your death. You can however license Verwertungsrechte (economic usage rights). When you make creative works in the course of employment (see §43 UrhG), your employer automatically gets the Verwertungsrechte necessary in the context for the work, which is typically an exclusive right (no one else, not even you, can use the work). Your are not in an employment relationship with your school, so it has no rights to your works and cannot prevent you from publishing them on copyright grounds. When you see advice on the internet to check with your school first, that is U.S.-specific advice. Since you're still a minor (7–17), you only have limited capacity to enter contracts or legal transactions (bedingte Geschäftsfähigkeit). While you are able to make transactions involving your own means (e.g. buying something with your pocket money) or make transactions that are only to your benefit (such as accepting a gift), other transactions are schwebend unwirksam (~ pending ratification), until your parents agree. The relevant law is in §107 and §108 BGB. This is a problem with open source licenses. If you publish software under a license, this license is schwebend unwirksam. Someone might start using the software under the license. But then if your parents refuse ratification, the license would be invalid, and everyone would have to stop using your software and destroy any derivative works they made. This is a bit of a problem, especially since open source licenses are otherwise assumed to be irrevocable. So if you want to offer a license (including open source licenses), please give legal certainty to the recipients of the license and ask your parents for their consent first, possibly even in writing. Per §107 BGB, the license you offer with their consent will be valid.
If it's patented then it doesn't matter that you independently came up with it. Most software is not patented, though. Most developers do not even think about patents when writing code. In theory you could spend your time keeping up to date on software patents so that you avoid infringing. But this probably only makes sense for specialists who would want to read the latest patents in their field anyway. All software is protected by literary copyright, though. In this case they will try to prove that you did not independently created it, and did copy it. Whelan v. Jaslow in 1986 ruled that structure, sequence and organization of a computer program were protected by copyright. So you could be liable even if you did not just copy and paste sections of code. But even if you're worried the court would get things wrong and think you copied a program when you never even saw it in the first place, there is really nothing you can do about it.
Yes, your clause specifically limits you to only working for COMPANY, even in your off time. Canada does not have a law protecting your right to work secondary jobs (moonlighting) in your off-duty hours. This means that any contract clause specifically limiting you to work with the employer only is valid, and breaking it is cause for justified dismissal. Based on this, do I need to ask for explicit permission to work on such projects? Yes, you will need to disclose any potential &quot;business or occupation whatsoever&quot;. You could play contract games by saying &quot;it's only a hobby&quot; or &quot;it doesn't make any money&quot;, but you will be opening yourself up to issues. The best thing to do is to disclose your project to your employer and get in writing their permission to work on it with specific terms that you will not be using company time or resources in any way. See: Patterson V. Bank of Nova Scotia
Patenting a new invention doesn't extend the term of the patent on the old invention. The later patent covers the new parts of the new invention, but not the parts that were in the old patent. The whole point of patents is to provide protection against even independent reinvention for a limited time, after which the invention becomes free to use for everyone (and since you disclose how it works in the patent, other people actually can use it themselves).