App developed in company time has potential to be sold commercially. Need advise


1

Situation

I work on the public sector and have developed a web app for internal use to handle a department's business process. The application has been a success according to its users. Some of the users are internal employees, some are consultants.

The consultants showed the application to their superiors and they came back saying if there is a way they could purchase the application, as it would be beneficial for their consultants that are scattered around other companies with a similar business process.

It turns out that the legal hoops that we have to trough to sell the application are too complicated because we are not a software shop that sells software.

Concerns

So my questions are as follows:

  1. How can I make that product mine? (I build it using company's time, so I guess it's property of my company).
  2. If the answer to question #1 is "No". Can I change the following:
    1. Database Design (Change table names, columns, extend it with things that I have
      in mind, redesign certain relationships).
    2. Change the Look and Feel of every screen.
    3. Change the application name.
    4. Enhance the app by making and Android/iPhone version
If I do question #2, then:
  1. Would the product be mine?
  2. Could I loose my job?
  3. Could my current employer sue me, even though is a complete different product, but got the requirements while working for them?
My Goal

My goal is to be able to keep my current job (benefits and pay are great. Work is pretty good, 8 and out and no pager) but start this on the side and go solo when it takes off.

Software Patent Business Copyright Intellectual Property

asked Dec 8 '11 at 06:37
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Viriato
144 points
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1 Answer


4

  1. You will need to have your company assign rights to the product to you. This will generally involve you purchasing it from them, even if it's for a nominal fee.
  2. (1-4). Can you change those things? Sure. However, again, look at your employment agreement. Some companies have clauses that state they own everything you do, even if it's on your own time. You are much better off simply approaching management and asking what needs to happen for you to acquire full rights in the existing app.

If I do question #2:

  1. See #2 above.
  2. Absolutely, but you could lose your job for so many reasons anyway. See your employment agreement.
  3. Yes they can sue you. Anyone can sue anyone else. The question is whether or not they can win. One way of winning is to simply make it financially difficult for you to defend yourself. In some cases, even the threat of a lawsuit will have potential clients/investors steer away from you. As to the merits, this will depend in part on your employment agreement, how close the new app is to the old one, when you worked on it, where, etc.

At the end of the day, go talk to your boss. S/He will probably send you a couple levels up or to HR/Legal for a discussion. Take your time and be patient while working through this.

It doesn't hurt to ask. However, bear in mind that one of their concerns is going to be on your focus with the company as you start this ancillary business.

In the negotiations, you might consider offering free updates to your current employer as you build the app out.

BTW, in the past year I've had two employees start businesses. In both cases they approached me and let me know what they were trying to do. Neither were competitive, one was complimentary to our core focus. Not only did I give them "permission" so to speak, but I also actively encouraged it by being more flexible in work schedules. Both employees were so excited I'm pretty sure productivity went up.

Unfortunately, neither took off. One had problems with a product they were having made in a foreign country; the other idea was killed by the market.

Personally, I think it ended up being an overall win for everyone. They got experience in trying to get a business off the ground in a "safe" setting, which will help them for the next go around. I got employees that understand a bit more about the complexities of running a company as well as actionable ideas on how we can be more effective.

good luck to you.

answered Dec 8 '11 at 06:55
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Chris Lively
443 points
  • Thank you very much for your response, it was very informative. I am software developer for the company, but because of the way they have positions here, old school titles and the same for everybody the only thing that changes is the level at the end of the tile (I, II, III, IV) I do not think that I have signed any different contract than the network analyst or the janitor. There is really no wording specific to applications development intellectual property or alike. – Viriato 9 years ago

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