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Question

I work for a company as a systems analyst. During my lunch breaks I created a software program enabling people to construct complex spreadsheets with voice commands. I left my company and started my own business, does the company have rights to my company and or product? I did ask occasional technical questions from my cube mate while she was working. And, I did use my company computer. But, I created this on my lunch time. They claim that I used their training that enabled me to create this. I knew nothng before I worked there. Will they have a solid claim because I used my training to develop the product? Will they have a good case because I used my company laptop? Will they have a solid case because I asked my coworker questions while she was working?

Submitted: 193 days and 19 hours ago.
Category: Intellectual Property Law
Value: $15
Status: CLOSED
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Optional Information

No IP agreement. , United States

Already Tried:
Nothing... just curious on "WHY" they will have a solid case or not. Thanks! Karlene

Posted by PaulMJD 193 days and 19 hours ago.

Answer

Whenever anything is created on company time or on company premises with the use of company equipment this is considered property of the company, regardless that you did it on your lunch breaks. Your company has the best case here, even if your lunch breaks were unpaid, since you not only did it while under their employ, you did it using their equipment and thus they would be entitled to rights to the software.

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193 days and 18 hours ago.

Reply

I have five questions left unanswered:
I know that if I developed the invention… my program… on company time, and/or used company facility and /or resources the company should be entitled to shop rights.
And… I know that if part of my job description was to “develop software programs” then the company has the right to my program. But, my job was to research, plan and coordinate, thus I did not create my program in course of employment. Also, there was not an IP agreement. My confusion is in my employment status.
If I was a contract employee… then was it my time or the company’s?
Who owned my lunch break. If I was on was salaried… they did. But, I was paid hourly therefore it was my own time was it not?
Who technically owns “my” company computer?
My biggest question does the fact that I asked my coworker while she was working have any relevance to the case?
Does the fact I was trained have any relevance?
Thanks! Karlene

193 days and 18 hours ago.

Reply

I have five questions left unanswered: I know that if I developed the invention… my program… on company time, and/or used company facility and /or resources the company should be entitled to shop rights. And… I know that if part of my job description was to “develop software programs” then the company has the right to my program. But, my job was to research, plan and coordinate, thus I did not create my program in course of employment. Also, there was not an IP agreement. My confusion is in my employment status. If I was a contract employee… then was it my time or the company’s? Who owned my lunch break. If I was on was salaried… they did. But, I was paid hourly therefore it was my own time was it not? Who technically owns “my” company computer? My biggest question does the fact that I asked my coworker while she was working have any relevance to the case? Does the fact I was trained have any relevance? Thanks! Karlene

Posted by PaulMJD 193 days and 18 hours ago.

Answer

Let's start with the easiest question first. 1) Your company owns the company computer. Also, your company provided the space used to create your invention, since you did it on their premises.

2) Regardless of your job description, the fact that you did this at their facility, not at home or off site, they get a claim to the invention. Of course, absent any written agreements here regarding inventions, you still have a right to retain some of the rights to the invention, but not all. If the invention you developed was later used at the employer to do any of the employer's work, then they own the invention regardless of when or where you developed it.

3) You said you were an employee, not an independent contractor. As an independent contractor not hired to develop software, the invention would be yours. As an employee, hourly or salaried, this is what gives rise to the ownership rights to the software.

4) The fact that you asked another employee for some advice is relevant to the case since this is a use of yet another company resource.

5) The fact that the employer provided training to you is another reason why the employer gets to claim rights to the invention.

193 days and 18 hours ago.

Reply

So, there are a lot of reasons why they appear to have a claim. However, having a good case and a solid claim are different.
Do they have a "good case" because I used the company laptop, or do they have a "solid claim" because I used my training from the company to develop my product, or do they have a "solid claim" because I asked my coworker while she was working.
If they go after me, which will be the reason that will present their strongest case?
Thanks!

Accepted Answer

They have a solid claim for numerous reasons and no one reason is considered any stronger here than the next they would all be considered together in building the case that they have rights to the software. You should consider negotiating some percentage of rights with them.

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Expert: PaulMJD
Pos. Feedback: 99.2 %
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Answered: 5/12/2009

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