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Engineer refusing to file/disclose patents

389 points| chrisbennet | 7 years ago |workplace.stackexchange.com | reply

226 comments

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[+] UseStrict|7 years ago|reply
Upper management probably all patted themselves on the back after cutting the payouts. They'll tout that they "saved the company thousands, every year." In most industries innovation is key, cutting engineer pay for what is essentially voluntary work is setting themselves up for obsoletion in the near future. I don't blame the guy for "not remembering" what his boss was talking about.
[+] JackFr|7 years ago|reply
I imagine that someone looked at the program and saw it as largely a waste of money -- that it's unlikely that the patents being churned out at 2-3 a week, as IP were not worth the money they were paying for them, and a side-door bonus for engineering staff, they were not the most efficient means to talent retention & compensation.

It seems the better solution might have been to tighten up the review process -- keep the money the same but accept fewer. If the individual contributor in question was really as good as reported, he would have been untouched.

[+] kamaal|7 years ago|reply
The same Upper management will move on to other companies now, and make them obsolete too.

There is no way to prove they did bad at their previous jobs.

[+] throwitaway2|7 years ago|reply
"Innovation is key" is a mantra that sounds good, but it's not true. It's what people want to believe. It's like saying you need to constantly buy lottery tickets so you don't risk being a poor retiree.

If you have established a business and you bank on "innovation" your likelihood of anything from a net loss to catastrophic failure is actually quite high. In the long run, most companies fail anyway, whether they attempt to innovate or not.

Case in point, those companies that did survive in the S&P 500 since its inception don't strike me as particularly innovative:

http://www.aei.org/publication/fortune-500-firms-1955-v-2017...

[+] cygned|7 years ago|reply
> His employment agreement states that any and all intellectual property he generates while employed with us, even during weekends/free-time, is the property of the company.

If I had such a clause in a contract, I would turn down the opportunity. Maybe I am missing something obvious here, but I don't see the point of this.

Even worse, this:

> any and all intellectual property

sounds to me like one couldn't do anything creative in their spare time. Even a picture painted would belong to their employer.

[+] smnrchrds|7 years ago|reply
> Even a picture painted would belong to their employer.

Taken at face value, it's much worse than that. All the family photos he has taken, that novel on the back of his mind he wanted to write, that poem he wrote for his wife's birthday, the all belong to the company now. If he made a personal sex tape for his and his wife's enjoyment, the company can request it and sell it online or upload it to PornHub at their sole discretion.

There is no way in hell I would ever sign such a clause, unless there is literally life and death on the line.

[+] jeremysalwen|7 years ago|reply
As many others have mentioned, there is an exception in California for things done using no company time and resources, and unrelated to your work or the company's area of business or "future anticipated research". This exception required by California law is often copied verbatim into employment agreements, even if you are working outside of california. However, the last clause of this term essentially de-fangs the term entirely if you work at any medium sized company.

I have worked at two FANG companies, and in both cases I crossed off this clause from the contract and initialed the line before I signed it. I told them that I couldn't sign that line and what I did, and in both cases, they said they would "get back to me" with what legal said. In both cases it never came up again, and I started working having signed only the modified contract.

I think that's a fair comprise of who owns what, and I would suggest anyone else to do the same thing I did.

[+] alain94040|7 years ago|reply
It gets even worse as you read further:

IT has searched his OneDrive, laptop, etc., and we can't find a single shred of code/documentation on these ideas

I'd say the company got what it deserves.

[+] Tomte|7 years ago|reply
> If I had such a clause in a contract, I would turn down the opportunity.

That may sound bizarrely unfair to you, but elsewhere (Germany) it's actually the law (but only for inventions/patents, not other IP).

The employee has to tell the employer about any patentable idea, even if not in the general field of his employment, and even if having occurred after hours.

The employer can then either claim the patent (but has to pay something), or he can release the invention (and the employee can patent it on his own).

[+] x0x0|7 years ago|reply
This is very standard outside of California.

Friends have lost jobs at companies whose names you would recognize. eg M worked part-time as a sound tech in his own recording studio and his software job would mean they owned the rights to that work. M refused to sign the updated contract and ending up leaving the company over it.

[+] userbinator|7 years ago|reply
sounds to me like one couldn't do anything creative in their spare time. Even a picture painted would belong to their employer.

Fortunately it seems that most things like this are relatively unenforceable, but IMHO it's still a good idea to keep anonymity/"firewall" what is done on company time from everything else. Don't publish non-work-time material under an identity that could be traced back to your real identity with the company, for example.

[+] syshum|7 years ago|reply
Unfortunately it is a standard boilerplate in many Employment Agreements in the US. Over broad terms written by contract lawyers completely one sided.

Fortunately most of the time if the employer is stupid enough to sue for non-work related IP many courts will toss the case and render the clause void in the agreement. However there have been a few bad rulings as well.

I remember on case where the employer sued an employee over a book they wrote after the book was successful, the employer happened to be having financial problems... If I remember correctly the judge ruled in favor of the employer

[+] jwalton|7 years ago|reply
In Canada, you wouldn't be able to work as a software engineer without signing a contract with such a clause. Investors like these clauses because they don't want some employee saying "Well, this part of the product I wrote in my evenings, so now that you're selling the company, I'm claiming ownership of it." It can be messy.

That said, most companies I've worked for here put that in your contract, but then are more than happy to give you written permission to release rights to (for example) open source projects, or things not related to the business. I worked very briefly for one company which literally tried to assert ownership of photographs we took in our spare time while we worked for them (I won't name them, as they're a little over-litigous). I did not work there for long.

[+] gumby|7 years ago|reply
In some states like Texas this is in fact the case. Worse, your knowledge can be used to keep you from working in the same field because the stuff in your head is deemed property of your employer.

I believe the crucial case was Conley v. DSC Communications Corp

[+] heelix|7 years ago|reply
I worked for a company that required me to tell them about all personal software developed for a period after I left the company. I suspect the intent was to make sure I did not create competing software... but the terms were clear and had a small reimbursement for filling it out and sending copies.

They got a bunch of custom ADND software for Windows CE. At some point, I got a phone call asking why I was sending them this stuff. It apparently irritated someone enough they released me from those terms.

[+] throwawaypatent|7 years ago|reply
This is a great way to demotivate programmers from self-learning and side projects.

Programming used to be my hobby and I was always creating webapps or whatnot. Whatever I learned during off-hours, it improved my productivity at work.

Since starting work at this new company, I have lost all the zeal for programming on the side. It feels unfair. Not that my little apps will ever make enough money to get noticed at work. However, there is always a little voice in my head which keep saying don't spend too much time on this project, you don't own it.

Looking to get out as soon as possible.

[+] seba_dos1|7 years ago|reply
How are such clauses even legally possible? It's ridiculous.
[+] sjapkee|7 years ago|reply
> His employment agreement states that any and all intellectual property he generates while employed with us, even during weekends/free-time, is the property of the company.

> even during weekends/free-time

It sounds illegal. In the US, you can really specify such clause in the contract?

[+] jopsen|7 years ago|reply
Usually, it just means that you ask your employer for an exception of you're doing something in your spare time.

Few employers will want to claim ownership of your mobile game/app or whatever, unless it's related to the company or what it does.

[+] amluto|7 years ago|reply
AIUI, this is mostly unenforceable in CA.
[+] stevebmark|7 years ago|reply
> If I had such a clause in a contract, I would turn down the opportunity.

It sounds like you haven't worked in tech before? Apple is one company well known for a clause like this.

[+] mikekchar|7 years ago|reply
Rule number one: don't piss off your programmers. Programmers produce things that are largely unintelligible to management. The whole reason we have arguments about processes is because we can't measure the productivity of our programmers. It's difficult to even measure the quality of the work without getting other programmers involved. Even if there is a serious bug, how do you determine if it's due to bad luck, sloppy coding or sabotage? If a previously exceptional employee stops being exceptional right after you stressed them out is it because they are being stroppy or because they are stressed and can't perform?

Do not piss off your programmers. They can sink your boat either because they are stressed out and can't perform or even just because they are pissed off. If your company policies involve pissing off your programmers, you are in a pile of trouble. The real answer to this guys question is: If you can't fix your policies so that your programmers are happy, then find another job. This one is done.

[+] anoncake|7 years ago|reply
> IT has searched his OneDrive, laptop, etc., and we can't find a single shred of code/documentation on these ideas.

A smart engineer is not stupid. Who knew?

[+] tntn|7 years ago|reply
So I know the ownership of IP produced on an engineer's own time is pretty dicey (even in California, where it depends on whether the work is in the same field as the company, or something), and most of the time employers seem to have some claim to ownership over all work done by their employees.

And yet loads of people employed by companies work on open source software, write blogs, work on their own stuff, etc and companies don't seem to get involved. So what's the situation here? Is it something like companies legally may be able to assert ownership over work down by employees of their own volition on their own time with their own equipment, but mostly choose not to bother with it?

Assume I have an "ordinary" contract in the USA. Would I need to worry about this if I wanted to write stuff on a blog, assuming it isn't directly related to work I do?

(I understand that if it really matters I should talk to a lawyer, and will not interpret any responses as legal advice, etc. I'm just curious if other professional employers worry about this or just quietly do their own thing)

[+] emilecantin|7 years ago|reply
I always fight to have these clauses reworded in my favour. I'm always prepared to walk away if they don't. The one time I didn't get my way, the wording was very ambiguous, and I got their (okay, sufficiently narrow) interpretation in writing.
[+] duxup|7 years ago|reply
>Assume I have an "ordinary" contract in the USA. Would I need to worry about this if I wanted to write stuff on a blog, assuming it isn't directly related to work I do?

In the US it is going to depend on the company, but I feel safe in saying "most" companies don't care about such things and largely limit their interest to the work you do directly for them.

[+] encoderer|7 years ago|reply
Some employers are quite strict, so avoid those (google, famously). Avoid even a hint of crossover with your employer’s business, use your own equipment and time, and work for a successful company that is too busy with its own customers. If some how you make a billion dollars (you won’t) it might be a problem. A million won’t even be noticed.
[+] pvg|7 years ago|reply
The compromise way it generally works - there is a very broad 'Assignment of Inventions' agreement you sign as part of your employment and the employer makes it easy to add exemptions to it for your pterodactyl blog and Colossus Mark 2 open source emulator project. And that's it. The last thing anyone, including non-insane employers, wants is an after-the-fact dispute over IP rights, like the people in this story ended up in.
[+] xucheng|7 years ago|reply
> And yet loads of people employed by companies work on open source software, write blogs, ... [snip] ... Is it something like companies legally may be able to assert ownership

For open source software and blogs, is it feasible to argue that they are a form of free speech thus cannot be owned (or in practice restricted accesses) by companies?

[+] peteradio|7 years ago|reply
Without these clauses Employers don't have a chance at getting the IP.

With these clauses there is at least the opening of a lawsuit. Most are probably not in a position to fight these lawsuits whether or not they'd win in the long run.

[+] _cs2017_|7 years ago|reply
> This engineer has filed over 30 successful patents over the past 2 years, and all of these inventions are used in our products.

From my limited experience, typical software patents are either ideas that might (if you're very optimistic) be useful in the future, or descriptions of an approach that everyone already kinda knows. The only purpose they serve is to create a legal weapon to use in patent lawsuits or counter lawsuits. None of the ones I've seen would improve performance or functionality of any product at the time they were written.

Writing 30 patents in two years that actually improved a product seems to me beyond hard. Invented by a single engineer rather than a team, doing it in their spare time, only adds to my degree of disbelief.

Has anyone seen examples of such productivity that you could share? Since all patents are public, an inventor's name would suffice.

[+] JackFr|7 years ago|reply
My company just started promoting such a policy, and a guy on the business side mentioned filing a patent for some software I had written. Now the work is subtle and nontrivial, but in terms of its novelty, it might be worthwhile as a lightning talk at a meetup, and I can't see it as patentable. It's all known techniques. Another person at the company assures me that this is very patentable, but maybe I just don't get it.
[+] kuroguro|7 years ago|reply
I don't think it's mentioned anywhere that they are software patents. Might be a hardware engineer.
[+] CalChris|7 years ago|reply
If this were a salesperson and they reduced commissions, would it surprise anyone that motivations were also reduced?

If management thinks these patents are worth less, a reasonable position, then they should file fewer of them. Indeed the cost of patent prosecution is significantly greater than the engineer's patent compensation. Raise the filing bar; that'll save some money. But if they lower patent compensation, they have to understand that it will also lower motivation.

[+] stygiansonic|7 years ago|reply
Indeed, if they lowered patent compensation they are explicitly signaling that it is of less value and importance. The fact that this engineer doesn’t want to contribute anymore lines up with that.
[+] jknoepfler|7 years ago|reply
money will not fix this situation. if you breach trust once over compensation, you lose all goodwill from your staff. your talented staff will leave immediately. there's nothing to be done to fix it, full stop.

the literal second a company begins curtailing engineer benefits they transition from a forward moving company to a fungibility-fest maintenance mode enterprise

[+] salawat|7 years ago|reply
An Engineer is not bound to produce squat for you outside of what you ask him to during his work hours.

I encourage most junior devs to keep their projects to themselves in fact. Weaponization of patents ethically demands it.

From reading about said company's treatment of this engineer in particular, they are simply reaping what they've sown. Marginalize your engineers, or try to catch them out with legal maneuvering (which is what most employment contracts now are intended as) when you first hire them to hedge your bets at being able to claim something down the line, and this is what you get.

Edward Demmings says one of the keys to Quality is to maintain and foster An environment in which the craftsman's pride in his work can flourish.

Blanket claims to IP and marginalized patents are not that.

[+] usrusr|7 years ago|reply
> An Engineer is not bound to produce squat for you outside of what you ask him to during his work hours.

But there was already a presentation. A court favorable of the employer could easily regard that as an implicit promise to provide what was presented, off-hours or not.

[+] brogrammernot|7 years ago|reply
I wish I knew was company this was so I could blacklist them from any future contact.

@OP, upper management fucked up majorly and if I were you I’d be looking to leave as well. Everything you’ve said makes them seem like complete assholes who said “fuck the culture” and opted for profits over people.

What should you do? Tell the guy in person that he should leave, take the patented material with him and don’t look back.

The company has had to have made more than 110k off his parents, and this is such an infuriating question to be asking.

[+] duxup|7 years ago|reply
Company removes incentives for a employee to do thing(s), and doesn't get thing(s) and is now surprised by result.

It's always hard to know but the way this is being described sounds like the person asking the engineer for this information has little to no relationship with this person. That can't be helping. They cut the incentive program that gave him extra money and insist he move to move on his career, they clearly don't belive what he says and I'm sure he has picked up on that. None of this seems like the way you treat a valuable person at the company.

[+] jacknews|7 years ago|reply
Regardless of the legal situation, this is a pretty shabby way to treat an employee.

While the bonus was good, he contributed patents. How much did the company profit from those? Quite a bit more than you paid in bonus, I'll wager.

And now you've cut the bonus, but still expect (and seem to be trying to force) the employee to continue contributing in his spare time?

Sheesh.

[+] pimmen|7 years ago|reply
"We offered X dollars for patents, the engineer accepted that price. We now want the patents for X-Y dollars, the engineer doesn't accept this price. I have no idea how to negotiate and I would like to strongarm him instead. Help me!"
[+] trhway|7 years ago|reply
> IT has searched his OneDrive, laptop, etc., and we can't find a single shred of code/documentation on these ideas.

neural implants cant come too early.

>I've tried offering a one-off bonus for him to just anonymously leave a thumb drive with the data on my desk after hours, but he just claims he "doesn't know what I'm talking about".

the engineer is smart while the manager doesn't seem so if he really thought that the engineer would walk into that trap.

> and even an offer of $25,000.00 for the IP didn't work, which would have been according to the "old rules". I think he's worried that by agreeing to such a deal, he's opening himself up to legal liability (it would involve indirectly admitting he was being dicey/dishonest about "not knowing what I'm talking about")

Definitely a Fisher/Spassky level of managerial thinking. Only at this game the rooks aren't sacrificed, they are shafted.

[+] UncleEntity|7 years ago|reply
Wait, so the engineer came up with an idea in their spare time, demo'd it to the bosses then decided that it wasn't worth it to follow up on the idea in their spare time but now they want to somehow force them to turn it over after apparently deleting all evidence of it?

I don't actually know what to think about this (and I'm a big fan of absurdity) but suspect there's some hidden moral to this story...

[+] dboreham|7 years ago|reply
There's a whole legal theory behind what's discussed in the OP : patent rights get assigned to employer by employee under terms of their employment agreement, subject to whatever laws pertain under the relevant jurisdiction (e.g. California is probably different). The $1000 bonus thing has a legal purpose to beef up the employer's rights to the IP, since under law the rights accrue to the inventor not the employer. And on and on. So this manager is a clueless idiot who needs some schooling in the law and the various risks he is running in taking the action he's taken. Ianal, but...seriously..if you're an engineering manager you should know this stuff to some level.
[+] ris|7 years ago|reply
This company's "patent program" is everything that's wrong with the patent system. Patents are (well, were) intended to protect critical parts of work, not to be farmed for building up a war chest.
[+] cashsterling|7 years ago|reply
Not a lawyer. From past start-up legal experience... it depends on the state. In some/many states, an employer unilaterally changing compensation for a portion of an employment agreement, without asking employees to resign an updated contract, would render those portions of the agreement null and void.

Some states have employment laws against certain non-compete and [iirc] blanket IP assignment clauses. In those states, even if employees sign to those clauses, they are still void according to state law.

[+] olliej|7 years ago|reply
The standard employment contract in us tech is basically: if you do it on company time, or use company property, equipment, or anything paid for by the company it belongs to them - you would almost certainly be in breach of contract if you refused to disclose.

Now even if you didn’t use any company resources, most contracts provide at the very least the right for your company to use any IP you develop, even in your off time, even without any of their resources. Your contract in all likelihood would give them actual ownership of the IP.

You could choose not to tell them about this IP, and I believe you would be fine, as long as you never used or published it - even after termination of employment - because not being required to disclose the IP does not change ownership - it belongs to the company, even if the company does not know about it.

Source: going over job offers+contracts with a lawyer

[+] gbrown_|7 years ago|reply
> I think he's getting ready to switch jobs, and we need the technical information/code he used to create the demo.

This irks me, it's not explained or alluded to why this is needed, surely this should be wanted?