I work for a small software company in California.  At home, in my
free time, I experiment with small side projects which loosely relate
to my job responsibilities at work. I never singed an Intellectual
Property agreement, but I am concerned that my company could come
after my hobbies and claim they own them.  Do I need to protect myself
and my hobby work from legal action?  If so, How?  I don't really want
to meet with a lawyer as it is just a hobby. But I would like to know
my basic IP rights and read a few example cases in layman's terms.

---

Request for Question Clarification by serenata-ga on 04 Feb 2003 19:08 PST

Hi, Expomarker ~

A lot of Intellectual Property law is easily understood, and there are
some areas that it becomes 'murky' and can be weighted by such issues
as:

1. Whose equipment was used to create it;
2. How closely it is related to your job and the scope of your
employment;
3. Where and when it is created; and

other aspects.

Whether or not you need to protect yourself and your hobbies depends
on their value to you. It is conceivable your employer could claim any
of it as their property by rights of your employment agreement,
including 'scope of work'.

There is a lot of additional information that would need to be known
before an easy answer could be given with any degree of confidence.

This matter obviously concerns you or you wouldn't have asked the
question, and considering the variables in both your employment
situation and requirements of clear-cut ownership in intellectual
property, if it is important to you, consult with an attorney who
specializes in intellectual property rights to find out just where you
really do stand.

Good luck!
Serenata

---

Clarification of Question by expomarker-ga on 07 Feb 2003 11:50 PST

Thank you everyone for your comments.

I will clarify my situation as much as I can.  I work in a field that
requires publication of work, in the form of journals or open-source
projects, to advance my career.  It is this exposure that develops
into a reputation that I can take with me if/when I leave the company.

Now, I obvisouly can't open source or publish any of the work that I
do for my company.  They are not too big on exposing any proprietary
code and/or algorithms.  My only option to publish is if I do the work
on my own time, with my own resources. If I am not paid for this work,
I would like to know that I can retain rights to any inventions so
that I can publish them.

My biggest fear is that I will put thousands of my free time hours
into a project and have it legally taken from me for the sole benefit
of my current employer.

Now, to answer your specific questions:

1.  My own computers, books, journals, etc.  But I work from home, so
some of this could be seen as murky.

2.  My employer has no products that fit into this space in the
market.  Nothing that I would be doing would be based on technology I
have developed for my employer.  The only reason I say "loosly
related" is that my employer could argue that my ideas extend thier
product line into those spaces in the market.

3.  At home, weeknights and weekends.  Outside of company specified
hours.

One more thing to note is that I approached my boss about it and he
mentioned it would be OK under the guideline of full disclosure.  The
problem is that I have to give them my idea under full disclosure and
there is nothing preventing them from taking it at that point.  I
don't believe that my employer would be mallicious about IP, but these
are trying times for the software industry.

Be careful and don't do anything even remotely related
to your regular job for your hobby.  Almost all companies,
unless they hate you or want bad press, will ignore
it unless you make it hard for them too - like showing
people at work, discussing it in the office, making
stuff public and having your name in the paper.
I signed one of the most restrictive ones of these,
and what a coincidence, didn't have a single new
idea outside of my job for 4.5 years, but a year
after I left they seemed to come from nowhere.
Good luck.

Hello Expomarker,

I've been facing some of the same problems, but fortunately my
employer was very understanding. He told me that whatever hobby tool
could speed up my work, could also be partly programmed on work time.
For other tools that I exclusively made for the job, I asked him to
give it to the public domain, to which he agreed.

To test the grounds, you might develop a "dummy" tool; something which
is related to work, but created in spare-time. You can then ask your
employer what he thinks about it, and wether or not he objects to you
publishing it.

Personally, I couldn't imagine the company restricting your usage
rights to something created at home in your free-time; but better
listen to the law experts on this one! That's why I'd like to point
you to an interesting article. I suggest you read through it as I
cannot quote everything worthwhile, as in its whole it's exactly about
the problem you stated:

Who Has Custody of Your Brainchild? (by Michael Kinsman, December 15,
2002)
http://www.jobjournal.com/article_full_text.asp?artid=697

"Technology workers everywhere think about making better widgets or
finding better processes. Some carry on their workdays from the
privacy of their home offices, while others simply enjoy the
challenges of problem-solving as a hobby. Sometimes, the things they
work on in their own time have nothing to do with their day jobs.

'If he developed an anti-fog shower mirror, but he's a software
engineer working in the wireless industry, there probably wouldn't be
a problem,' [intellectual property attorney Peter Martinez] says. 'But
if he developed something directly related to his work, the company
would have a strong case.'"

And:

"California's labor code specifically grants individuals the rights to
inventions they develop on their own time without using company
facilities or resources, as long as those inventions don't result from
work they were doing for their employers."

The article concludes that there "will be no easy way to sort through
this."

So I'm afraid I have to add, the answer is -- there is no easy answer.
Hope this helps!


Search terms:
"intellectual property" software job hobby