Legal Question in Business Law in Massachusetts

Re: Non-Compete/inventions- 'work for hire'

If you execute the agreement, yes, they do have the rights to your inventions and/or creations. However, the contract may have language (or you could insist that it include language) that makes it inapplicable to inventions and/or creations of yours accomplished prior to the execution of the agreement. Unfortunately, while I do agree that it is unusual to have an employee execute such an agreement while employed by a company that is not involved with product development, it is your employers perogative. It sounds to me like it's a matter of negotiation. I'd be happy to review the proposed agreement if you like.

Re: Non-Compete/inventions- 'work for hire'

While non-competes signed after employment has commenced have been declared unenforceable in MA, the case law has not dealt with the work-for-hire provisions in such agreements. They could if you sign this claim your software program.

It would strike me that this is an issue for discussion and negotiation. I have assumed you already work for this company and this is not part of a new-hire procedure.

You should have an attorney review the document and assist you with any revisions to protect your current inventions. I would be happy to assist.

Re: Non-Compete/inventions- 'work for hire'

The Devil is in the details here. Unless the proposed WFH agreement has specific language that conveys your rights to already-existing inventions, it would not be read to convey your copyright in your prior works. Best thing to do is to register your copyright -- if the work is substantially completed, you would want to do this anyway, but it also would provide evidence that you had created the work as of the filing date with the Copyright Office (thus refuting any subsequent claim by your employer under the WFH agreement).

There are specific rules for registering software programs, which permit you to file only portions of the code (else, anyone could see it and engage in reverse-engineering to create a functionally-identical but non-infringing work). Be sure that you print out a complete copy for later evidentiary purposes. Glad to provide further details on this,

Best wishes,

LDWG

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