“in the course of your employment” – how common is this in the UK?

[taking_counsel]

UK contracts often state that the company owns everything developed "in the course of your employment". This clause sounds very innocent. But it's not. See [1]. Note that using you own equipment, in you own time does not save you! From [1]:

"If material which includes IP rights is created outside office hours and/or using the employee’s private resources this may give rise to arguments that the rights belong to the employee rather than their employer, but that is not decisive. The fact that work is done outside normal working hours does not necessarily mean that the work is not done in the course of employment as, for many employees, there is often no clear demarcation of the hours of work.

The key question to be asked is whether the work was the kind of work which the employee was employed to do i.e. whether it was within the scope of their employment. Could the employee have been ordered to do the work and would it have been a breach of contract for the employee to not do it? The terms of any contract of employment and job description will be relevant, however, these (and duties more generally) often evolve in the course of time and it may therefore not be appropriate to rely on them exclusively."

How common is this in the UK? It seems like every company has this clause. How is one suppose to do anything on the side?

References

[1] Russell-Cooke associate Emily MacDonald looks at intellectual property rights within the context of the employment contract (2020). Available at: https://www.russell-cooke.co.uk/insight/briefings/2020/intellectual-property-rights-in-the-course-of-employment-who-owns-what/ (Accessed: 12 May 2021).

[bacbilla]

As someone else has said, it is quite a standard clause. I have had it on most of my contracts, from memory.

I sought an employment lawyer's advice on this once (as part of a larger question). The scenario is heavily affected by common law. I am guessing (as this is HN) that you are working in technology. The way it was described to me is that if you work in, say, banking, and you make your own banking app on the side, this could be argued to be "in the course of your employment". If you made a video game however (or something else unrelated to the business), the law is likely to side with you.

My best advice is to be transparent with your (potential?) employer (assuming you have nothing to hide) and let them know what you do outside of work hours and see if they will amend your contract suitably. If not, spending £250-300 for an hour of an employment lawyer's time is worth it and is likely to resolve your question.

[taking_counsel → bacbilla]

Thanks for the advice.

"My best advice is to be transparent with your (potential?) employer (assuming you have nothing to hide) and let them know what you do outside of work hours and see if they will amend your contract suitably."

So I'm in this situation at the moment, and I did exactly this. I sought an employment lawyer's advice with my previous contract, any they suggested in future that I do exactly this.

I asked HR/legal for a "background IP form" or "prior list of inventions form" (it goes by different names), so I could list my project and ensure that they approve it.

I revived a blanket response from legal stating that I didn't need such a form because: either my projects fall outside the scope of the clause, in which case I don't need to worry about it, or they fall within the scope of the clause, in which case they are not wavering anything. And finally that it's up to me to judge whether the project fall inside or out of said clause.

Not overly helpful. I've tried to play it safe by getting approval, but it seems to have lead to a dead end. Not sure hiring a lawyer at this point is worth it if the company is entirely unwilling to engage in the standard professional processes.

[bacbilla → taking_counsel]

That sounds like a disappointing attitude from their legal department, but if it's a big company I can see that they don't want to get into those sorts of discussions.

Only you will know the stakes and what you're willing to risk; most judges in the UK are fairly pro-employee and take a dim view of big corporations overreaching their rights (but please don't take this as absolute fact!). If you're not a senior employee and you're doing something like I mentioned in my previous comment (making a game in your spare time), I would personally not worry.

If it's your big idea for your future business and you want to work on it in evenings and weekends, then I would want to be rather more cautious.

[giantg2 → bacbilla]

Basically the same understanding here (in the US). It's domain specific. I work in finance, so I can't build any investment apps or anything that would potentially compete with my employer. I am allowed to run an unrelated LLC, build a website for it, etc.

[muzani]

It's usually not malicious, but lazy. You'll have to propose an alternative.

I've seen similar and asked a lawyer to amend it to something like material created using office owned equipment. If you want to go one better, you'll have to say that it's material created for work purposes and then define what the work purpose is.

An hour of the lawyer's time is probably cheaper than two hours of your time trying to research better words, and they'll likely get it right.

[taking_counsel → muzani]

Thanks for the comment. Yeah, I asked a lawyer check out my last contract, which had the same thing. I'm just trying to gauge how common this is. A lot of employers don't seem to want to remove said clauses.

It's all a bit chicken and egg. You need leverage to get said clauses removed, but to have such leverage, you need to be somebody in demand ... which means you usually need to have at some point realised something of value yourself, which you can't do if you down own the IP rights.

[giantg2 → muzani]

"It's usually not malicious, but lazy."

This is a very accurate description of most contracts/laws, and government in general.

[tldrthelaw]

US attorney here (but not your attorney not legal advice etc. etc.), this is standard everywhere. Note that "standard" doesn't mean you can't push back against it. If you think there is sufficient value to be lost, hire an attorney to propose some alternate language that draws the line around the stuff you do at the workplace with employer-owned tools, etc.

[foobarbaz33]

Modern day serfs. Can't let them own something.

[taking_counsel → foobarbaz33]

Yep, that's my feeling too. I don't know why more people aren't angry about these kinds of clauses?! It boils my piss, I've spent 15+ years developing skills, and I am still now allowed to own the fruits of my labour, produced on my own time and dime!

[2rsf → foobarbaz33]

It's necessarily correct nor simple. I agree that the choice of words is too wide and companies don't make it easier to understand what is included and what's not, but as an employer I don't want my employees to compete with me while still being employed.

[ramtatatam]

I worked for a Big Corp which included this statement in the contract. At the time I was too young to care, but my older colleagues were very aware of this. Some of them who worked on their gig in the evenings left a few years later to start their own company, where they simply took that evenings work to the product.

[taking_counsel → ramtatatam]

Yeah, I fell into this trap with early employers too. But refuse to do so going forward. As I posted above, I am currently delaying with a potential employer that just doesn't want to engage in the process (they are not the first), and I'm wondering how common this is. It's really pushing me towards self-employment.

[cpach]

Keep in mind that some commenters might be talking about the situation in the US, which might not be the same as in the UK.

If you’re unsure it might be a good idea to consult a lawyer. And/or maybe a professional body such as The Chartered Institute for IT…?

[seangp]

It’s common. I’ve always asked employers to amend this and they happily oblige.

[taking_counsel → seangp]

Thanks. Are you aiming for any specific type of employers? SME? Big companies? Start-ups? Every company I've come across say (paraphrasing):

* "It's boilerplate; we can't change it!"

* "We never enforce it, do what you want."

* "Do what you want, who's gonna know?!"

* or some blanket legal statement: "Either your projects fall outside the scope of the clause, in which case you don't need to worry about said clauses, or they fall within the scope of the clause, in which case we are not wavering anything. And finally, its up to you, not us, to judge whether the project falls inside or out of said clause."

I've yet to come across a UK tech company (or R&D company) that has ever taken my concerns seriously. It's starting to bum me out. I don't want to work on releasable products knowing deep down that I might not actually own them.

[thorin → taking_counsel]

If you're in the UK and you're really making something in your spare time that might be worth anywhere near as much as your paid income you should really be contracting/self employed. The company will be wondering why you aren't completely focused on their work as generally managers won't understand why people are doing their work as a hobby as well as having a free time job. I do know a couple of employees who added exemptions to their contracts, but if your aspiration is really to be earning from your own projects you need to be considering contracting.