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Who owns intellectual property at my firm?

New Rochelle, NY |

I am an employee at a consulting firm. I am getting a certificate in a program (at my own expense), which is outside the domain of what we do but has applications for the services we supply. My intent is to use the things I develop for both my day job and for work I do outside the firm. I understand that work I do on the job is owned by him. However, I am developing this work outside the job as part of my homework assignment and will be presenting it to another organization. This firm may close soon -- I want to have clarity as to who owns the work I develop. I want to have something in writing that protects my right to use what I developed outside of work without getting his permission or further permission from someone who might buy the firm after he retires.

Attorney Answers 7


  1. Work you perform for your employer is "work for hire" and they own it. Whether they own what you develop outside of work depends on how different it is from what you create for your employer. Your right to want an agreement with your employer.

    If you'd like to discuss, please feel free to call. Jeff Gold Gold, Benes, LLP 1854 Bellmore Ave Bellmore, NY 11710 Telephone -516.512.6333 Email - Jgold@goldbenes.com


  2. I agree with Mr. Gold.

    If this answer was helpful, please mark it as helpful or as a best answer. This answer is for general education purposes only. It neither creates an attorney-client relationship nor provides legal guidance or advice. The answer is based on the limited information provided and the answer might be different had additional information been provided. You should consult an attorney.


  3. While federal copyright and patent law applies as well, the applicable controlling law is your state's labor law. Under California law the materials and/or processes that you created which have "applications for the services [that your employer offers]" would very likely be owned by your employer. Yes, even if they were created on your own time and even if you paid for the certificate program. Only a New York-licensed employment attorney can provide you with an analysis under New York labor law.

    The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.


  4. Agree with other counsel, but have one other question: do you have a written employment contract that deals with the issues of IP. Very often, certain kinds of consulting firms, particularly in the STEM areas, such as biotech and IT engineering, attempt to assert IP ownership of any inventions created by an employee, whether part of his job description or on his "own time" or not. Sometimes these agreements provide for a carve out for specific inventions submitted by the employee which are reviewed by the employer and excluded.

    Sometimes these kinds of non-compete, non-disclosure and employment agreements comport with state laws, sometimes they don't. You'll want to ask an IP attorney and bring any specific employment agreements or employee handbooks that may pertain to your employer.

    This answer is provided under the Avvo.com “Terms and Conditions of Use” (“ToU”), particularly ¶9 which states that any information provided is not intended as legal advice or to create an attorney-client relationship between you and me or any other attorney. Such information is intended for general informational purposes only and should be used only as a starting point for addressing your legal issues. In particular, my answers and those of others are not a substitute for an in-person or telephone consultation with an attorney licensed to practice in your jurisdiction about your specific legal issue, and you should not rely solely upon Legal Information you obtain from this website or other resources which may be linked to an answer for informational purposes. You understand that questions and answers or other postings to the Site are not confidential and are not subject to attorney-client privilege. The full Avvo ToU are set forth at http://www.avvo.com/support/terms . In addition, while similar legal principles often apply in many states, I am only licensed to practice in the State of New York and Federal Courts. Any general information I provide about non-New York laws should be checked with an attorney licensed to practice in your State. Lastly, New York State Court rules (22 NYCRR Part 1200, Rule 7.1) also require me to inform you that my answers and attorney profile posted on the Avvo.com site may be considered "attorney advertising" and that "prior results do not guarantee a similar outcome".


  5. Generally, I agree with all the other answers given with one caveat: you can contract for whatever you want. Thus, BEFORE you start developing things at your own expense "outside the job" that may be subject to ownership dispute with your current employer or their successors, clarify the ownership, license terms, if applicable, etc. I have dealt with situations like this many, many times, and in my experience, it is so much easier and less costly to deal with this up-front than to "hope" you won't run into conflict later and find you're wrong. Good luck!

    Ms. Brown may be reached at 718-878-6886 during regular business hours, or anytime by email at: marykatherinebrown@hotmail.com. All of Ms. Brown’s responses to questions posted on AVVO are intended as general information based upon the facts stated in the question, and are provided for educational purposes of the public, not any specific individual, and her response to the question above is not legal advice and it does not create an attorney-client relationship. Ms. Brown is licensed to practice law in New York. If you would like to obtain specific legal advice about this issue, you must contact an attorney who is licensed to practice law in your state.


  6. Any work you perform for your employer belongs to the employer unless you have a written agreement that provides otherwise. This does not depend on whether you conduct the work as "homework". If it falls within the scope your your employment, you should assume your employer owns it. If you want to carve out exceptions to this, you need to negotiate and enter into a written agreement with your employer. In the absence of a written agreement that makes clear your rights and obligations, courts will give the benefit of the doubt to your employer. If you are concerned that the company might go out of business or merge with another, then you need to retain counsel to draft and negotiate an agreement that protects your interests.


  7. Get a NY IP lawyer to help you negotiate an "amendment" to your employee agreement that addresses this. If it is a problem, you need it resolved now and you need to do that as non-confrontationally as you can if you value your current job. The solution to this dilemma is often a non-exclusive cross license between the firms and you, so that everyone has the right to use the inventions and no one is excluded. That protects your right to use the invention without cutting out either firm. You need a win-win solution to hope to get either firm to agree. They are just not likely at all to agree to keep you on while also agreeing that you can take what you invent during the time you are still there, as they are not interested in protecting you or being fair - they will want the most they can legally get. So to get it you need to have something to give them in return that makes it better to agree than not agree. A carrot not a stick is nearly always the best way and only way to get these deals done. You need an attorney that knows the NY law to do that for you so your negotiator can speak with authority and be convincing an appear more objective and convincing.

    Bottom Line: Get a NY IP attorney to do this for you.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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