Maybe someone can help. I wrote a rather unique little piece of software for my employer, which works with various messaging services to deliver content. It’s sort of unique in the field I’m in, and has been well received.
Now, I am getting lots of people asking me if they can buy this. As I wrote this for my employer, I understand that they own it, and I cannot sell it or give it away to anyone else.
But…this software can be easily hosted in a software as a service model, so I could re-write it for that environment, host it on my own server, and sell a subscription to it.
Now, the last thing I want to do is create ill-will with my employer, and I’d never be able to live off of what I’d make on this, so I don’t want to ruffle feathers. I understand the work I did for them is their property, but I don’t think you can copyright an IDEA, so as long as I re-wrote the code for a different environment on my own time, on my own server, is there a problem here?
About 8 years ago, I wrote something that was like this – first in its class, and really popular. Someone else actually formed a company and took my idea, wrote their own code, and has been selling it all this time, to hundreds of clients. I’m sure they’ve made a ton of money. I don’t really want that to happen with this idea. I’d rather give it away than see someone else grab onto it.
I don’t think there is anything wrong with it. Otherwise, you’d never see any reverse eng. of code ever. But you could have some clause in your contract forbidding you to do things closely related to work and get paid. Not unheard of.
As a previous poster noted, you should check any employment agreement, NDA, etc. that you signed when you started working for your employer, but my guess is that this is a risky idea from a legal and practical perspective. Employment agreements/NDAs often have assignment of IP clauses that try to reach beyond what you do strictly at your desk during your 9-5, Monday-Friday time, as well as strong confidentiality obligations of non-use of company confidential information that could trip you up, even if you re-write the code. Apart from pure IP ownership concerns, there are some unfair competition issues to think about as well. Simply “optimizing a few things” as Francois suggests is risky, as the result may well be a derivative work of the original code, to which your employer has ownership rights. And even if you can make good arguments that you aren’t running afoul of legal restrictions (as you suggest, re-writing in a different development environment, in different language, or your own time might get you there), there is a real practical concern that you’ll piss off your employer by putting something out in the market that competes with their product.
I’m sure I sound like a paranoid killjoy, but given that I’m an IP lawyer who writes company-side agreements for software companies for a living, this is one of the very few slowtwitch posts where I can weigh in with anything close to an informed opinion. Tread carefully here, or you may be the focus of unwelcome attention from overpriced, zealous lawyers like myself
Not a lawyer, but my guess is no. When you wrote the original code you were being paid by X. Surely some bit of the original code or ideas or experience you gained from writing for X would show up in the new code. If so they will likely assert they paid for some or all of the work.
It’s not that easy with software and ideas. It really depends on the agreement you signed when you were hired.
An example that comes to mind is Brin and Page at Stanford…and schools like Stanford are really hard ass when it comes to software development on site. As far as I know Brin and Page were paid by Stanford as research assistants.
Numerous examples like that in the software industry. And there are many successful spin off companies started from universities and from other companies.
Yeah, I’m waffling on whether it’s a good idea to even bring this up with my boss.
See, I really have no sort of employment contract. I wasn’t hired with the idea that I’d be writing code, but I’m doiing it anyway, so there wasn’t any sort of contract or legal form I signed when I took my job.
This software is really more of an informational thing, using it wouldn’t allow anyone to compete with my employer, and doesn’t impart them any advantage really, it just allows better communication with customers.
The infallibility of the ST brain trust notwithstanding, it seems to me that a couple of bucks thrown at an attorney specializing in Intellectual Property law would be money well spent.
David in FL is correct that if you want to pursue this, your SAFEST bet is to consult an IP lawyer and let him ask you the questions that need asking. It’s hard to do this type of interview over the Internet. Based on what you’ve written so far in your posts, this is my take:
This is a software issue, which may have both patent and copyright implications. There is no “work for hire” doctrine in patent law, so to the extent the software might be patentable, and you have no obligation to assign inventions to your employer, it’s yours. If you were asked to write the code as part of your job function, for which you were paid, then the copyright in the code probably belongs to your employer. Now, Francois is somewhat correct in that if you write different code structures for performing similar functions, then you might have an argument that your new code is not owned by your employer. However, keep in mind that judges and juries typically don’t like technicalities and might come out on the other side, if they have any wiggle room at all.
My $0.02 is to take your idea to your boss (or up the company chain to the person who can make the decision) and tell them that what you want to do. If there is really no risk that the company will lose revenue, I would imagine you’ll get their blessing. If you don’t, then accept it and be secure in the knowledge that you are a decent person who didn’t try to screw his employer.
Re: the patent side. I would highly doubt that his invention would be “patentable”, but it wouldn’t hurt to speak with an IP lawyer (I’d pick someone who specialize in software).
Not too familiar with patenting code, but I know that it needs to be more than code, like a computer system + code, etc.Maybe the invention is less than a year old. But based upon what he wrote above, (Now, I am getting lots of people asking me if they can buy this.), I think that he and his employer would run into a 35 USC 102(b) statutory bar, unless he could get his patent application in within a year of the invention.If he did have to assign inventions to his employer, and he tried to patent this “new” invention, I would guess that he would run into the non-obviousness clause of 35 USC 103(a).
