
Ask HN: Startups while working and Assignment of Invention - InventionA
Like a lot of hackers out there; I have a job. And like most of you guys, I had to sign an "Assignment of Invention" clause when hired. So now I have some great ideas that I want to work on, but have anxiety about the "what-ifs".<p>My brain just says to go for it; because it is pointless to worry. My gut is turning over the idea of having success only to be cut down by the man.<p>For what it is worth, my particular clause makes it very clear that anything developed outside work and not using their equipment is excluded from the clause. However, those exclusions are excluded if they are 'related' to the business. So what comes to my mind is, .. What does 'related' mean?<p>Anyway. Sorry for the rant, but this is making me nuts.<p>(throwaway account, obviously)
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grellas
In California, Labor Code 2870 allows you to keep inventions conceived or
reduced to practice entirely on your own time and without use of an employer's
resources unless such inventions "relate at the time of conception or
reduction to practice . . . to the employer's business" or to "actual or
demonstrably anticipated research or development of the employer."

"Relate," in this sense, can be read pretty broadly and so there is always
theoretical concern over this issue if you as an employee developed something
on the side.

In practice, though, there is quite a broad scope for employees to do side
projects without having them swept in by such clauses. The exception is where
you use expertise that is directly related to your job duties to come up with
a better way of doing things in the very area in which your employer competes.
Common sense suggests why that should be an exception: if the rule were
otherwise, any employee could basically claim job-related inventions as his
own.

If you have already left employment, and have not yet developed anything, then
you should normally have little risk of having your ideas being deemed to
belong to your employer. It is normally virtually impossible for an employer,
for example, to prove that you were still employed "at the time of conception
or reduction to practice" of your idea, as opposed to afterward. Two important
exceptions to watch out for on this point: (1) if you file a patent
application shortly after leaving employment relating to your employer's
field, this is like waving a red flag in your employer's face that you had
conceived the invention while employed; and (2) some assignment-of-invention
agreements set forth a rebuttable presumption that any invention you develop
within x period of leaving employment is presumed to have been conceived while
still employed, and the legal effect of this sort of clause is to treat such
an invention as belonging to your employer unless you can affirmatively prove
otherwise (an often impossible task).

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pg
In practice the interpretation of "related" that matters is the one done by a
nervous VC or acquirer doing due diligence before a deal. Their definition
tends to be broad.

On the other hand, what people worry about is source code, not ideas. If you
can claim all your code was written after quitting, you're usually safe. Which
means in the worst case you can just rewrite any app that seems promising
enough that you'd be willing to quit your job to work on it.

Another option is to ask your employer for an explicit, written waiver of any
IP rights in a specific side project. But many employers will only do this if
you're prepared to quit otherwise.

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anamax
This is why you want to disclose broadly when you're hired and update before
you start doing anything.

