How would you suggest that I handle the ownership of software? 8 Answers as of July 18, 2013

A month ago I told my employer that I had a good idea for a piece of software and he said it sounded good and to go for it. I told him I was doing this on my own/own time. Now that the software is coming close to completion he is trying to have it copyrighted/patented under his company name and is laying claim to the idea I had. We had nothing in writing nor a verbal agreement that I would explicitly write this software for his company, yet he still wants to claim ownership since I work for him (on other software). I don't have much money to hire an attorney if it comes to that. I'm about to give up on the idea and not do anything with it out of fear of a lawsuit.

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Sebby Law Office
Sebby Law Office | Jayne Sebby
Original work done by an employee that is relevant to the business, done on company time, or using company equipment, is usually owned by the employer. As you are a software writer, it is likely that your employer would have a claim on your idea. However, if you can prove that your idea can't be used in the company in the course of normal business or wouldn't be a product that the company could add to its product line, you may have a claim to the work and the copyright.
Answer Applies to: Nebraska
Replied: 7/18/2013
Microtechnology Law & Analysis | Daniel Flamm
Based on these facts, I would say you need help from a patent attorney. What to do depends on what the idea and/or software are worth, and who knows about themt. If the idea is patentable you could quickly file a patent application of your own. Even if the employer files first, you can likely file your own application and oppose his. You might even sue the employer in small claims court. If the software/invention are valuable, it is possible that an attorney might accept some or all compensation on a contingency basis. Obviously, if you do any of these things, regardless of the your outcome with respect to your idea/software, your supervisor will eventually find out and almost certainly will not like it very much. So you may loose your job. On the other hand, if the employer you work for is a large or medium sized entity, they might see things your way if the facts are presented in a strategic manner (a good attorney can help with this aspect as well). Legally speaking, the invention (if any) should belong to you. U.S. patent priority is now on a first to file basis, but first to file means the first *inventor* to file (e.g. one who copies an invention is not entitled to priority). If you have assigned your patent rights to the employer, that assignment usually will not cover unrelated work and inventions conceived/done on your own time away from the workplace (but deciding the outcome can depend on specific details). I could continue, but the gist of all this is that you should first assess (alone or with an attorney who has hands on technology experience) the likely value of the idea/software, and discuss your specifics (the employer, any explicit records or evidence, etc.) with an attorney before deciding on an appropriate course of action. Many attorneys will be agreeable to an initial personal or telephonic discussion in confidence, as a courtesy without charge (you may contact me if you wish). This is one way to get a better handle on your alternatives. One last thing- please use this experience as a lesson that it is important (and much cheaper) to have an attorney help you at the onset of a relationship or endeavor, and that your agreements (contracts)/inventions should be written and given a prior review by your attorney (think analogy to a medical checkup).
Answer Applies to: California
Replied: 7/18/2013
DANIEL NESBITT
DANIEL NESBITT | Hasse & Nesbitt
You should at least get a consultation with an attorney for a low fixed fee, but you'll need to supply details. There are two aspects to "software" the code itself which could get copyright protection, and the utility that might be patentable, depending on the scope.
Answer Applies to: Ohio
Replied: 7/18/2013
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
File a copyright on the software with the US Copyright Office asap. It will be in your name only. It can be done online and for $40.
Answer Applies to: Oregon
Replied: 7/18/2013
Gerald R. Black, Esq.
Gerald R. Black, Esq. | Gerald R. Black
Article I, Section 8 of the U.S. Constitution provides that, The Congress shall have Power to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. In other words, the copyright goes to the author and the Patent goes to the inventor. A common law right called shop rights may govern and whether the employee or the employer owns the invention depends on the facts and circumstances of each case. Rights are not universal and vary from state-to-state. Factors include: 1) Employment contracts (an employee may assign all rights to inventions to an employer) 2) The intentions of the parties. Was the employee hired to invent? 3) The nature of the business 4) The nature of the invention 5) The circumstances involving the creation of the invention. Is the invention related to the employee's job function, was it made using the employer's tools, or other resources? In addition, state statutes vary on this subject from state to state. It appears that your employer is most interested in your technology, and it also appears that you are a person who may be stretched financially to push your program forward, particularly, while you are working full-time. Would it be possible for you and your employer to negotiate rights to this technology, and you negotiate a raise plus a position to further develop the technology in exchange for a part interest? I suggest that you seek an initial consultation with counsel to determine more precisely the rights in your state, and a good course to proceed.
Answer Applies to: Michigan
Replied: 7/18/2013
    Webb IP Law Group
    Webb IP Law Group | Jason P Webb
    Since you don't have a clear agreement in writing, it will all depend on the specific facts and will be difficult/expensive/risky to proceed with confidence and safety.
    Answer Applies to: Utah
    Replied: 7/18/2013
    Law Office of Kirk Buhler
    Law Office of Kirk Buhler | Kirk A Buhler
    The first thing you should do is read your employment contract. Most companies have you sign a document (upon hiring) that gives the company rights to all intellectual property regardless of if it is written at work or at home. Some other companies only claim rights to software written for a work related projects. As an example, if your company writes software for weaving machines in the garment industry, and you are writing software to feed animals they are not related. If you do not have an employment contract related to ownership of intellectual property then it can be difficult to show ownership for a non-job related project by your employer. Patents are created by individuals and not companies. If the company wants ownership you will need to assign your rights to the company. Most companies have an assignment document and must provide some "valuable consideration" for assignment.
    Answer Applies to: California
    Replied: 7/18/2013
    Intellectual Property Center, LLC
    Intellectual Property Center, LLC | Ak Shaf
    Absent an agreement to the contrary, an invention/patent belongs to the inventor. I would suggest hiring an attorney to review and discuss your concerns.
    Answer Applies to: Kansas
    Replied: 7/18/2013
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