Employment contract query...Intellectual property

[parker2k]

Hi there,

I've recently been offered employment with a UK company and after reading the contract of employment I was hoping that someone on this might site might be able to clarify the following paragraph:-

You agree that any invention, improvement, design, process, information,
copyright work, computer program, trademark, trade name or get-up, work or
other output made or created by you (whether or not created or developed on
the Company premises or in normal working hours) in the course of the normal
duties of your employment or specifically requested of you or capable of being
used or adapted for use in the Company or any Group Company or in
connection with the Company or any Group Company together with all
Intellectual Property subsisting therein (collectively “Intellectual Property
Rights”) and such Intellectual Property Rights shall (subject to paragraph 19.5)
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belong to and be the absolute property of the Company (“the Created
Intellectual Property”).

From my own interpretation of this I felt that possibly this paragraph might have meant that any work I carried out while in employment to this company, whether in my own time and absolutely nothing at all to do with the company if it could be modified for their purposes would legally be theirs. I'm sure that I've probably misunderstood the legal terminology but for peace of mind would certainly appreciate a second opinion on this.

Many thanks

Ian

[MissFM]

Re: Employment contract query...Intellectual property

Opinion of fellow designer (but not lawyer) - I think it means exactly what you fear it means.

If you agree to that you are in their opinion giving them ownership of every idea you have 24/7 whilst you are in their employ - or maybe even beyond, it's a tricky area - but there again they may not be able to enforce that.

It's an unreasonable clause ( basically saying that if you work for them they own you body and soul) but you do need high level legal advice on it - copyright law is byzantine BUT does of late more favour the originator in that the copyright is automaticaly your property rather than you having to fight for it. However, as you have spotted, signing this kind of contract would not just cloud the issue it would mean you would be fighting to prove your intellectual rights (if you want to keep them) -am making the assumption that you do not want to sign away your intellectual rights.

Speaking as both a shafted one on some counts and as a winner on others - it really is worth getting a specialist solicitor on this if you desperately want that particular job - otherwise just strike out that para and sign the rest of your contract if you're happy with it. If that action is a problem to your potential employers it is very likely that they would become an even greater problem to you in the future - as you rightly fear.

[parker2k]

Re: Employment contract query...Intellectual property

Thanks for your response MissFM, your answer certainly gives me a lot to consider. I did already have other doubts regarding this position but coupled with this clause in the contract I feel I will probably hold off making a move just yet. On the other hand if I do decide to go ahead then I will certainly seek professional legal advice as you suggested. I do design software in my free time and so the intellectual property clause of this contract would certainly be of great concern to me.

[MissFM]

Re: Employment contract query...Intellectual property

You are most welcome Parker. Please do not take my word for it as it is purely based on experience rather than legal expertise. I personally think you have made a wise decision (and avoided a trap) but that is just my personal opinion. Expert legal advice, particular to your situation, is a more solid path to follow as this is an increasingly challenging area of law. Good luck! FM

[M31]

Re: Employment contract query...Intellectual property

Hi, in short this is a restrictive covenant and as far as I am aware they can insert this to protect their business interests were you to leave for a rival company. This is pretty standard by the looks of it. I am taking the BPTC currently and want to specialise in employment law after winning two employment law cases so don't take my advice as gospel but when I get back home after the holiday period I will research for you and ask my employment law specialist lecturer.

[shell]

Re: Employment contract query...Intellectual property

My son is a pharmacist (qualified just over a year ago), full time jobs are a bit scarce and as a result works through an agency as a locum. He has been given a contract/ form to sign by the agency on behalf of Boots and informed that if he ever wants to work locum for boots he has to sign this form. Part of this contract/form is a claim to all intellectual rights whether he is working for Boots or not. A few other really unfair to the employee clauses as well. But the fact they are claiming intellectual rights over casual workers whether they are working for Boots, another company or in their free time is really amazing. Needless to say, being his mothers son he has refused to sign this.

[IanM]

Re: Employment contract query...Intellectual property

Thanks for your response MissFM, your answer certainly gives me a lot to consider. I did already have other doubts regarding this position but coupled with this clause in the contract I feel I will probably hold off making a move just yet. On the other hand if I do decide to go ahead then I will certainly seek professional legal advice as you suggested. I do design software in my free time and so the intellectual property clause of this contract would certainly be of great concern to me.

Definitely take legal advice before making a decision on this contract.

If you are confident enough in your own abilities to design software then i would turn down the job offer and look for backers to market your own software. It may be this company is aware of the software you design and want to get their hands on it for themselves without paying you for it so i would be looking to protect your own software before even contemplating taking the job.

Believe in yourself!

[MissFM]

Re: Employment contract query...Intellectual property

http://www.ipo.gov.uk/ http://www.copyrightservice.co.uk/co..._copyright_law but don't know if this covers your field!

[parker2k]

Re: Employment contract query...Intellectual property

Thanks for all your replies, they've been really helpful. I did officially turn down the job offer as the contract clause in relation to the intellectual property did put me off and with my other doubts I thought it just wasn't worth making a move at the moment. Thanks again for all your input.

Ian

[MissFM]

Re: Employment contract query...Intellectual property

Good decision IMHO!:santa2: Good luck x