QUESTION
Can an employee retain rights to software developed for a company?
Asked on Oct 02nd, 2014 on Business Law - New York
More details to this question:
There's an opportunity to create some software to solve an internal business need. This business need is not confidential or proprietary in any way. In fact, the software in question is only indirectly related to our business. The developed application would be an enhancement to an open-sourced project millions of people use. I'd like to retain the rights to the source so that I may either freely distribute it or sell it in the market place. No work has been performed yet, but we have loosely discussed it internally. The initially consensus was that the work was too significant to take on, but I believe differently now. Still, to do it correctly I'd want to perform the work off the clock and manage the application properly. It seems difficult to approach my employer this way, but surely they'll want the work done if it's less than we anticipated. I also doubt my employer has any interest in profiting from this or really maintaining it. We simply need to solve a small problem.
1 ANSWER
An employee can retain such rights in two instances. First, if the employer agrees. Generally, employment agreements will contain provisions which make any new idea or device which the employee develops in the course of his/her employment duties the property of the employer, but the employer and employee can always agree to a different arrangement. Second, assuming that there is no such agreement, if the employee's innovation is related to his employment duties, the result probably belongs to the employer. However, if the innovation is unrelated to the employee's duties - for example, if a mail room employee develops a new type of welding torch - it probably belongs to the employee. From what you've written, especially the fact that you have already discussed pursuing the innovation internally, it seems to me that this innovation is in the course of your employment duties (particularly since it appears that you brought the idea to your employer), but you know the facts better than I do. The safest way for you to proceed is to get your employer's agreement that you can retain the rights, perhaps in return for a token share of any profits.
Answered on Oct 03rd, 2014 at 9:13 AM