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I developed software and started a company while employed. Who owns the intellectual property?

New York, NY |

The employer is not a software company. The software and company I built is not within the scope of their core business. My role with the employer was not as a software developer. I used my own resources on my own time. I even received an e-mail from in-house counsel stating that the employment contract that I signed does not apply to my own personal developments as long as I used my own resources, time, and what I built is not within the scope of their business.

I no longer work for them and now want to begin selling and licensing the software. Does my former employer have any claims to my software and company?

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Attorney answers 5

Posted

Not according to the brief facts outlined above provided all is properly documented. It is probably worth your while to have a confidential consultation with a local attorney as soon as possible to ensure that there aren't any latent issues that might complicate the situation. You can find attorneys here on Avvo. 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.

Bruce E. Burdick

Bruce E. Burdick

Posted

Be sure to keep the email and contact an Intellectual Property lawyer near you. You want to protect your software legally and need a lawyer to do it right, an IP lawyer specializing in software licensing would be best.

Posted

It would be unwise to try and figure out an answer to such a fact sensitive matter through an online forum. You need to meet with a local attorney who can review your documents and all details. Good luck.

Our replies to Avvo questions should not be considered specific legal advice to any individual, and no attorney-client relationship is formed with you. Our aim is to provide general principles that may be useful to the Avvo community as a whole. You should seek individual legal advice pertaining to your specific factual situation, and the laws applicable to your jurisdiction. Moore & Moore Attorneys at Law -- thelaw@mytrustedlawyer.com

Bruce E. Burdick

Bruce E. Burdick

Posted

Your facts sound pretty clear, but you need to protect your IP rights, so seeing that IP lawyer is a good idea. While their mention this issue and bring a copy of the email.

Posted

You seem well positioned to obtain a favorable formal opinion from a local intellectual property attorney. Potential investors may want to review such an opinion before contributing resources to your start up.

You are not my client. I am not your attorney. The above comments are not confidential, not "legal advice", and not "legal opinion". I am licensed as a patent attorney and in the State of Connecticut. Retain and consult an appropriately licensed attorney to identify the laws and facts material to your concerns.

Bruce E. Burdick

Bruce E. Burdick

Posted

And, perhaps just as importantly, you want to do what you can to protect your software from copying and the IP attorney will be able to help you do so.

Posted

If you developed the software on your own time and it did not relate to your employment responsibilities, then you own the software. Nonetheless, your employer may not agree with you regarding the "scope of employment". Further, it is usually foolish to get into disputes with a former employer on a matters such as this---litigation is expensive and probably unnecessary. My strong advice is to retain counsel to negotiate with your former employer on this issue. Chances are you can achieve your objectives through a negotiation resulting in a written agreement resolving any disputes about ownership of the software. Take a conservative approach here---and in the long run you will be better off.

Bruce E. Burdick

Bruce E. Burdick

Posted

And, perhaps just as importantly, you want to do what you can to protect your software from copying and the IP attorney will be able to help you do so.

Posted

contact our firm if you would like assistance... we handle such cases regularly and believe we can help