Signing an Inventions Assignment Agreement

Question

My hopefully-soon-to-be employer has asked me to sign an Inventions Assignment Agreement. Generally, the contract seems fine, as they wish to ensure their IP is protected and that I'm not screwing around on them.

However, it makes no exception for work done on my own time/equipment that is unrelated to their business (my state has no labor code granting me that right).

I don't think they are actively trying to be unfair (their agreement is some boilerplate I found online), so I asked if they would be willing to except "inventions" created on my own time, etc.

If they come back and say they will not, I'm trying to figure out what I should do. I really want the job, and this is not a good time to be unemployed; I'm lucky to have found such a good fit, but I don't want to sign my rights away, either.

Other than "talk to a laywer", does anyone have any advice or thinking?

Update on 12/3 (and 12/30)

I did the following with success:

1. Modified the contract clause that gave them carte blanche, replacing it with verbiage from CA Code 2870 (basically says what I do on my own time & equipment is mine)
2. Asked nicely if they would approve the modified contract
3. They had their lawyers re-word it slightly (though it was essentially what I had edited)
4. I signed and am good to go.

Just goes to show you: it never hurts to ask (as long as you ask nicely :)

Answer 1

Is this a realistic possibility, i.e., that you would develop patentable inventions that have no relationship to your work? If not, why worry. If so, then you may want to ask them to amend the contract (and, yes, talk to a lawyer). Hopefully, they will be reasonable if you explain why you might have some inventions that are clearly not related to your work. Be prepared to walk away, though, if it's that important to you (or knuckle under if you really want the job). I doubt they would be unwilling to hire you if you approach them respectfully and request a change to the contract, but I suppose it's possible.

Answer 2

Ask them if they will take consideration on a case-by-case basis. If they are not trying to be unreasonable, then they may say you can speak to your manager whenever this comes up to see if a particular "invention" can be exempted from the clause.

Answer 3

Asking StackOverflow for legal advice is like asking Slashdot for marital advice.

That said, I'll tell you two contradictory things:

1. It's expensive to get a patent. Your company is only likely to want to spend the money to steal your non-work-related invention if they think they can make money off it, and if it's not in their core business, why would they bother?

2. Companies often engage in wholesale patent portfolio trades, which means that some companies are desparate to pad their portfolio, which means that they mgith want to steal your non-work-related invention just to pad the numbers.

Like I said, don't listen to StackOverflow, talk to a lawyer.

Answer 4

I am not a lawyer, and you should definitely talk to one, it would be $100-200 well spent.

More humble opinion, but I think what you should be asking is: when I talk to my lawyer, what should I be asking about?

Some suggested lawyer questions:

Invention assignment and contracts depend heavily on the state in which they are enforced. Often, a contract will stipulate which state has jurisdiction. I'm not sure what happens if the contract doesn't stipulate. The state laws will make a big difference. California, I believe, has laws that protect an inventor's right to creative work done off-hours, and without any company equipment. A lawyer can tell you the specifics of your state.

Another question to ask the lawyer -- is the state a "blue-line" state. blue line states have laws that allow contracts to be enforced up to the limit of the law. That means that a contract with unenforceable portions would still be binding in the enforceable portions.

Lastly, tell the lawyer what you actually want to do, and ask how to make that as clear as possible in your agreement. You don't want to end up in litigation, and the surest way to avoid that is to be as transparent as possible up front. Probably you want a way to ask for permission in writing from the company when you are working on something outside.

pure personal opinion: Owning what you make on your own time and your own equipment is very reasonable and pretty standard in our industry. It is also standard and reasonable for the company to ask you to assign inventions made on their time and their equipment to them. Stay away from your employer's business lines, and they will probably agree.

Answer 5

This feature of SO wasn't available when I answered it (the question text has been updated)