Code ownership while working as an employee

Question

I am working on a contract (in USA) where I will become an employee of a company and provide them with a software solution for their operation. In the contract it is clearly indicated that I am building an application which all codes are owned by me and copyright is under my name and the employer is licensed to use the technology and has no rights on the code or any other software related to the technology.

I just want to make sure that the employee-employer relationship should not breach the terms of the contract and put me in a difficult situation in terms of having all the rights and ownership of the code.

I will appreciate if you can let me know if there can be concerns involved in such situation or other areas that I should be careful about

Answer 1

As always, the standard "Ask A Lawyer" applies here.

On that note, I think it would be in your best interest to have your employment contract explicitly state that no changes are to be made concerning the ownership of the code that was considered yours prior to you becoming a full-time employee of said company.

I don't think it -would- breach it, but it will never hurt to make those conditions perfectly clear in any contract just in case.

Answer 2

Although I'm no attorney, but it sounds like your self-employed, or working for another company providing the technical service. If what you are brining to the table as an employee is all pre-existing knowledge, then becoming an employee should be the new baseline for your existing technology. Anything NEW you learn as an employee may become rights of the new company, but not all up TO that point.

That being said, what is considered "NEW". As a developer for many years, I've dealt with a variety of clients who have similar "cross-over" technological needs. So, even though I may not have applied a given technology in one application, but its techniques could be brought into as new needs of another, that COULD be considered as pre-existing knowledge too.

Answer 3

1. Don't ask programmers, ask a lawyer.
2. You'll probably be asked to sign an employment agreement when you shift from contractor to employee.

Have your lawyer review both documents before signing, letting them know about your specific concerns of making sure to retain the original rights / licensing arrangement.

When your lawyer finds objections in the document (and they always find something), many people have had success crossing out what their lawyer doesn't like in an employment agreement and signing the modified document.

Answer 4

Ensure that you have adequate professional imdemnity and public liability insurance to cover you against any litigation which may arise in the course of people using your code.

You will need this cover for as long as all rights to the software reside with you.

I would suggest that you negotiate a license or maintenance fee of some sort in order to help pay for this insurance cover until such time as you no longer hold the rights to the software.