Legal Question in Intellectual Property in California
I work for a software company as a developer. I have also been building a Web site at home in my own time. This site does not relate to or compete with the work I do for the software company.
However, I noticed the following "Assignment of Inventions" clause in our confidentiality agreement:
"Assignment of Inventions. I agree that I will promptly make full written disclosure to the Company, will hold in trust for the sole right and benefit of the Company, and hereby assign to the Company, or its designee, all my right, title, and interest in and to any and all inventions, original works of authorship, developments, concepts, improvements or trade secrets, whether or not patentable or registerable under copyright or similar laws, which I may solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the period of time I am in the employment of the Company (collectively referred to as �Inventions�). I further acknowledge that all original works of authorship, which are made by me (solely or jointly with others) within the scope of and during the period of my employment with the Company and which are protectable by copyright are �works made for hire,� and are solely the property of the Company. "
Does this only pertain to work that is related to the business of the company I work for, or to any work I do on my own time?
3 Answers from Attorneys
Contracts can always be disputed but I understand that the las sentence is that the contract refers to all works developed while at work or by efforts by your employer.
The agreement says (in one place at least) "I hereby assign" which makes the assignment of paptents self-executing, as opposed to "I agree to assign" which requires a further affirmative act on your part. However, in another place (the "works for hire" acknowledgment), the assignment of original works of authorship appears to apply to works created within the course and scope of employment, which would not include your time off. I would say that if the web development you do does not compete with the employer and your inventions (if any) don't have particular value to the outside world, you are relatively safe, but not totally immune, from a future suit. Another factor to consider is your employer's history of enforcing the agreement. If there have been suits in the past, try to get an understanding of the issues and results.
Also, note that Labor Code sections 2870 to 2872 basically say that an employment agreement under which an employee "shall assign" or "offer to assign" rights to an invention developed entirely on his or her own time is against public policy and unenforceable. The burden of proof that the invention was developed on his or her own time is the employee's.
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