A Project Completed At Home - My Employer Wants Rights To The System


8

I currently work within a call centre as a manager and I have a lot of admin work to complete.

During my own time, at home, on my own PC I started developing a system/tool via Excel that would allow people in call centres to easily manage their employees by automating 121 reviews, file notes, absence management, timekeeping management, probationary reviews, letters etc through this one system.

I have created this in my own time and not in company time but it got to the stage where the project was complete and I decided to sell the idea to other companies (the Excel file contains around 400,000 formulas - so you can see how long this has taken).

As I work within a call centre I have also brought this system to work, on a USB device, and I use it to help manage my team as a tool. I have never placed it on my work PC.

So after trying to see if I can get anywhere with this system I have now had my manager come to me as HR have contacted her. She was told to bring my attention to my contract section 32.2 which states the following:

"All work conducted by you as an employee of the Company belong to the Company and any copyright or intellectual property attaching to such work belongs to the Company and shall be governed by the provisions of the Copyright Designs and Patents Act 1988 (or any amendment consolidation or re-enactment thereof) and the Patents Act 1977."

Surely this does not count as it is unrelated to my company?

Any advise would be greatly appreciated as I have a week before HR are meeting with my manager over this?

Many thanks

Jim

Competition Employees Side Projects Copyright Intellectual Property

asked Aug 21 '13 at 21:50
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Jim Cullinane
41 points

5 Answers


9

All is here: "All work conducted by you AS AN EMPLOYEE of the Company... "

You didn'd do your project as an employee but in your free time on your equipment. The only problem I see should be that you (maybe) had some benefit using your experience from the actual job but in general, the balance should be at your side.

The AS AN EMPLOYEE means that you really can't sell or hold the work you did for your employer or during your working hours or using the employers infrastructure.

Another remark: you should check if in your contract, there is not some "conflict of interest" clause (= protection for the employer in case that you misuse his know-how by selling it to the competitor etc.)

Good luck!

PS: the best thing you can do if it starts going harder is to consult a lawyer... To be sure you are well adviced but it can also "calm them down" a bit...

answered Aug 21 '13 at 22:15
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Data Smarter
1,274 points
  • IANAL, but I believe the fact that OP used knowledge from work to write a tool to improve his work and then brought it into work to use it, would qualify under "AS AN EMPLOYEE". Most of the time, the ability to get out of these contract clauses is because there is no connection to work at all, I don't think you could say that here. – Cdk Moose 6 years ago

7

There are clearly some very different POVs on this one. @NewAlexandria would fire you, if the conditions for his #5 were occurring. While that is perhaps an extreme reaction, that answer does help to shed light on a particular POV, perhaps that you hadn't considered.

While it may be an option for your company to use bullying, threats and legal action to mitigate business risks and gain control of a possible asset, I would suggest that this would not be the best choice for them.

At the other extreme, you could immediately quit your job to focus solely on marketing your tool, and fighting off any legal challenges.

Perhaps a middle line would benefit both parties the most? If your project is to be a company asset, then surely developing and marketing it should be your responsibility, and you should be promoted and recompensed accordingly?

Alternatively, in exchange for approval from the company (a legally binding agreement) recognising your right to develop this tool in your own time, you could grant the company a free licence to use it.

answered Aug 22 '13 at 11:11
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I Pad Developer2011
171 points
  • He already said that this product is not the company's LOB. It helps call centers, and they happen to use a call center to perform their LOB(s) – New Alexandria 6 years ago
  • I like this answer because it puts forth the notion that you could partner with your company, instead of fighting it. – Ruffrey 6 years ago
  • I agree with this too. The case that it's not the company's primary line of business is important. – Carl 6 years ago
  • @NewAlexandria, I think the distinction is that it is their own call center, not one that they outsource work to. As such it is part of their business even if it is not their primary business. – Cdk Moose 6 years ago

8

You could stand to lose personal ownership of your idea, and be fired.

The main reason why is that the product you invented is directly connected with the job your are employed to perform. If you invented a new kind of BBQ grill, you would be safe. This leads to a few things:

  1. your 'personal' work outside of the office could be seen as competitive (other companies will use to to better compete against your employer), and therefore a conflict of interest.
  2. Your invention is probably influenced by the know-how that you gained on the job. From this it can then be argued that the core IP (the idea) has involved your employer, giving them rights to it. This makes them a partner, meaning that you could have damaged their property by conducting the business that you have with it already (solicitation).
  3. The fact that you've tried to sell it means you attempted to use your employer's IP for your own personal gain.
  4. even if you had any real leg to stand on, you screwed yourself by attaching it to your employer's property (plugging in the USB drive), and the using it to do office work. To run your program, it had to be resident in the memory of the computer (storage on USB is a ancillary).
  5. The fact that you then kept it on your USB drive and took it home could actually be presented as threatening: company property that is used to improve efficiency and maintain business advantage was removed from the premises and 'held for ransom'.

#5 is what I would fire you over.

Your employer likely now has every legal standing to claim the technology, fire you for malfeasance, or both (if they were those kind of mean people).

In most cases, since your employer does not sell this kind of IP, they would only claim a right-to-use.

Since HR has called a meeting in 1 week, either they are only taking the right time with their lawyers to build their case; or they are genuinely open to what could be going on. If the latter, your only safe routes are to avoid allowing any 'construction' of competitive practices to emerge in the discussion. You will likely have to give them the invention. Your rights to sell it outside the office are probably very little.

If you think you invented the next gold mine, and will be the livelihood of your future, you could quit before the meeting. This would make it difficult for them to gather evidence for a case (unless you've already told people about what you're doing).

Regardless, if they felt they had possibility of significant damages (loss of productivity by the removal of 'their' IP; increased competition), then they could get a subpoena to acquire the 'stolen' property. I would do this, if the risk management warranted it.

Their legal pursuit of you / the IP could damage your ability to do business. Actually, your reputation may already be damaged, if your HR found out because someone you solicited approached them (colleague communication).

answered Aug 21 '13 at 22:59
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New Alexandria
221 points
  • "Their legal pursuit of you / the IP could damage your ability to do business. Actually, your reputation may already be damaged, if your HR found out because someone you solicited approached them (colleague communication)." The thing is, they were contacted by the head of the company as I contacted them about it! – Jim Cullinane 6 years ago
  • @JimCullinane pardon, I can't grok who is 'they/them' – New Alexandria 6 years ago
  • They are the company I work for :) – Jim Cullinane 6 years ago
  • If you brought your invention to the awareness of your employer and you have an interest to sell that tech to outside companies, and HR sent you a letter referencing your hiring contract re: they own your idea - then I would say that they are giving you the chance to not appear threatening by trying to sell their ideas for your own profit. – New Alexandria 6 years ago
  • The fact that you then kept it on your USB drive and took it home could actually be presented as threatening: company property that is used to improve efficiency and maintain business advantage was removed from the premises and 'held for ransom'. Ultimately though I kept it on my USB and brought it into work, not the other way around? – Jim Cullinane 6 years ago
  • If the company establishes that it is their property, then the timeline of where the USB drive was, and when, is not significant. – New Alexandria 6 years ago
  • Re: point 1, and as @DataSmarter says below, check for a non-compete clause in your employment contract. Chances are it is there. – Darren Cook 6 years ago
  • Point 2 is very important, because it points out that you couldn't have created this product without your company's resources: their data, the training they gave you, even the work problems they have presented you, etc. I think in the eyes of the law you will look like a Star Employee, not an entrepreneur. – Darren Cook 6 years ago

3

Here is my recommendation. Stop using your application at work.

If your company insists that you hand over your code. Hand over buggy code. They can't use it without you anyways. With things like spreadsheets, since it really only makes sense in the eye of the creator, it's highly unlikely someone will fix the bugs. 9/10 the company will give up.

Continue working on your spreadsheet on your free time.

When you quit your current gig, and take the deep dive into entrepreneurship.

answered Aug 24 '13 at 04:47
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George
31 points
  • This is a savvy tactic. Even if the employer finds this discussion, they would be hard-pressed to prove sabotage (which is what this is, technically) – New Alexandria 6 years ago

0

IANAL and you should consult one before going to far with this. Providing a location would also help us deliver better advice. The following is my thought on the situation.

I am afraid you may not have much too work with here. These contract clauses are to protect the IP of the company more than anything else, so the when and where of the work will not be much of a deciding factor. Here are the problems:

  1. Can you show that you were fully competent, knowledgeable and experienced in managing a call center before working for this employer? Can you also demonstrate that you have learned absolutely nothing more about this process while working for this employer? If you can not show this, then you have (possibly unintentionally) used knowledge provided by working for your employer to build this application. It would seem hard to say this is not tied to your work "as an employee".
  2. You brought the application to work and used it. The fact that you left it on the USB drive and didn't copy it to the hard drive is immaterial. You ran the application, on their PC and likely with their licensed version of Excel. Clearly this would be work "as an employee".
  3. After the first time you brought the application to work and used it, did you ever make any more changes to the application? Improvements or bug fixes? If you did, then it could easily be argued that you used company equipment and company time to improve the application. Again I don't see how you could separate that from working "as an employee".

I would recommend that you do your best to work with the company to mend any possibly broken fences and see if you can use this application to demonstrate your value to the company. Maybe you will get a new position to help improve processes elsewhere in the company. A conciliatory posture is probably the best approach at this time.

Sorry to say but based on your description of your actions and the contract clause, I think you will end up getting the short end of the stick.

answered Nov 9 '13 at 09:35
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Cdk Moose
429 points

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