

Advice from HN: I'm about to be fired because I declared prior IP months ago. - DudeWithPriorIP

Quick backstory:
I'm very interested in a particular niche of the tech sector. I studied it in school. Did research on it. Have a very promising (but unlaunched) side-project in the field.<p>I'm also recently employed by a prominent company in the field. Talking about my experience in the field is what got me the job.<p>Several months ago, when I signed on, I got the standard "list your prior IP" form. I listed my side-project IP. I got the "I'll have to clear this with some people..." response from HR, then heard nothing. 3+ months pass, until this week. Seems we have a problem.<p>From what I've heard, there are two issues:<p>1. Due diligence of an acquiring company would find the simple act of me having this IP "too risky." IDK why, as I'm not claiming any of the company IP and the contract stipulates that if I inject my IP into their business they are granted a perpetual non-exclusive license. Seems fine to me to simply list it.<p>2. If I were to develop this product, it could theoretically compete with the company's product. It would only do this under the broadest sense of the field we're in. I can kind of understand this. They are still worried though, regardless of if I actually develop the product, that my simply having the IP makes this too risky. Seems as if they WILL NOT have me with the IP listed, regardless of non-compete clauses or whatever.<p>So, my options or potential outcomes as I see them:<p>Don't list my prior IP on the paper, keep my job. (This isn't the company's stance, but I assume I would retain claim to the IP via my papertrail of work from well before I started the job if I really need to prove it eventually).<p>List the prior IP, they "don't hire me" (despite me having worked there for months) and I'm de facto fired/quit.<p>List the IP, pitch them in the meeting, and have them acquire the IP. Work for the company to develop the product. (This would be an extremely unlikely scenario, don't even want to think about terms right now).<p>Somehow convince them that the product is far enough away from their product that it isn't a conflict. It sounds as if this will be unlikely as well.<p>Eff, this sucks. How do any companies expect to acquire domain experts without some prior IP baggage they've picked up along the way?<p>Someone talk me through it. Like I said, I love the field. I love the company. I love my side-project. Can't I just keep doing it all? :(
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freddealmeida
best solution is to create a holding firm. sell your IP to the firm. The firm
now owns your IP. You no long have prior-ip issues.

Your lawyers will show you how to do this nice and legal.

good luck.

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drallison
You really need to consult two lawyers, one who specializes in labor law and
another who specializes in intellectual property law. In this case you may
want high profile lawyers to demonstrate your degree of concern. If you are
fired over this issue, you may have some recourse. BTW, I am not a lawyer and
so I am not licensed to give legal advice. (include <standard.disclaimer>)

I would suggest that you put together a moderately short memorandum of the
facts. You will need a time line, dates and names of attendees of meetings,
summaries of what happened at each meeting and what happened. If you keep an
appointments diary, copy out the relevant pages. Collect copies of all the
employment documents. This will save time and money if you need to go forward.
In the future, when you have a meeting with anyone involving this, write a
memorandum to the file recounting exactly what happened with quotations,
agreements, action items, etc. Keep everything factual and avoid editorial
content and presumptions of intent.

Check your employment and intellectual property agreements. I suspect that
your employer does not have approval rights on your excluded intellectual
property declaration. The purpose of that declaration is to make the company's
job simpler--they claim to own everything you did not exclude--and since it
describes your intellectual property prior to the point of employment, they
have no say in its content, you own what you own. I can imagine a situation
where the company might ask for a clarification of what you are excluding, but
they really have no right to challenge the substance. Moreover, I further
suspect that the fact that they did not come back to you in a timely fashion
and that they went ahead and employed you immediately would be interpreted as
_ipso facto_ agreement that the declaration was an adequate description of
your excluded intellectual property.

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tnorthcutt
I strongly suggest you speak to an attorney.

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latch
I don't mean to be flippant, but why? Best case scenario (as I see it), the
lawyer says they have no case and they can neither fire you, nor take your IP.
Which leaves you working for a company that doesn't want you working for them.
Which, to me, equals quiting or being fired in the short or medium term.

Worst case, you quit, are fired, or sell them your project.

I think you should see if they'll buy your project, and if not quit or be
fired.

I'd go to a lawyer if they tried to claim ownership of your project, which
they don't seem to be doing.

Of course, IANAL, and neither is my parent, which may answer my question of
"why?"

~~~
damoncali
Because the OP may be able to sell/option/contract his IP, and that needs to
be done properly.

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ScottBurson
I don't entirely understand. You've already filled out the prior IP form,
right? I take it they're asking you to fill out a new one? But you have your
copy of the original one that they signed, don't you?

IANAL, but I think you should just quit. This is not ethical behavior on their
part. If you go along with what they're asking, you're essentially abandoning
your IP rights, in exchange for nothing but continued employment. I wouldn't
want to work anywhere that even asked me to do that.

Yes you can and should consult an attorney, but if the situation turns
adversarial, you might as well quit.

IP-related conflicts of interest are a real problem for anyone with
entrepreneurial aspirations who nonetheless needs to take a traditional
employment position. I think the best policy is to avoid working for companies
whose businesses have much overlap with one's own plans (I have done this on
occasion myself).

Yes, that probably means taking a less interesting job, possibly even making
less money, while you work on your project on the side.

The suggestion someone made to sell your IP to a holding firm is a very
interesting one, but I don't understand the implications. That company will
somehow need to defend its IP rights at some point -- at least, the way this
is going, that outcome seems likely -- and I don't know how it's going to do
that, unless you can get a patent filed in a couple of weeks. Even then, to
litigate a patent you need money.

It's more than possible I'm missing something, so maybe you should look into
that option, but my initial reaction is not too optimistic.

~~~
DudeWithPriorIP
Thanks. The issue is that _I_ signed the prior IP form months ago. They
didn't, HR sent it off to be reviewed or whatever, and they're just now
getting back to me. Months after I started working there.

Thus, I don't know what happens when they now say "we can't approve that." Is
it still a 'condition of employment' that I sign it? Even if they gave me the
job without themselves signing it? Can they just "not hire me" or would they
have to fire me or would I quit or....

~~~
ScottBurson
Again, you should run this by an attorney, but here's my reaction.

You have put your IP at risk by starting work without receiving a signed copy
of the prior IP form. Yes, you were going on the assumption that everything
would be okay, but in a situation where you know you have IP that overlaps
theirs, that was naive.

I still think you should quit. For one thing, if you continue to work knowing
that they're not accepting your prior IP declaration, you are tacitly
accepting their non-acceptance, a point that could work against you if this
went to court. But beyond that, the only leverage you have in this situation
is the value of the work you're doing for them. If you continue to work,
you're giving them what they want without appropriate compensation. If you
want to negotiate a licensing arrangement for your IP, you'll never do it
while you're an employee; the only hope is to make it a condition of your
return.

Don't take this advice without running it by an attorney, but that's what I
think. (It's possible, for example, that instead of quitting outright you
should simply refuse to sign any other prior IP form, and let them fire you.
But I would always rather be able to tell my next employer that I quit, rather
than try to explain why I was fired.)

Here's another consideration. They've as much as told you that they're trying
to get acquired. You don't know who the acquirer will be or what kind of
management they will have. Whatever difficulty you are having getting your IP
rights recognized now will be squared in that situation.

BTW, if money is tight for you, you should _immediately_ start looking for
another job -- one that won't have this kind of problem. This advice you
should take in any case, because looking is free and has no downside. If you
can find something else quickly, you'll be in a much better position to
negotiate with your current employer.

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Swannie
I feel for you. One of my perceived barriers to my on-the-side startup idea is
this very thing.

If you get to fill in the form again, declare yourself as a director of the
company /you will form/ to hold your IP. That's all, do NOT list the IP. The
IP baggage is then not with you, per se, but with the Ltd company you created.

Sounds like my perfect nightmare, I hope this resolves itself!

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ms4720
does not the employer have a problem here, perhaps more so then yours. After
all without clearance their IP is tainted from a purchasers POV. And you did
declare it before you were hired. That they did not do the due diligence
_BEFORE_ an offer is made, and accepted, could really cause problems for them.
You should really talk to a employment Lawyer, your position may be much
better then you think it is.

good luck

