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FormerLegalSecy

Whose IP Is This?

7 posts in this topic

Hi,

 

I am a public employee in case that matters, which I think it might.

 

In the course of my job I was in need of a highly specialized software tool. 

 

I searched high and low for anything like it, to no avail.  My boss also searched for it.  Our legal counsel searched for it.  Our legal counsel's law clerk searched.  We all came up empty.

 

So I gathered together all the research I could find, reviewed articles & government documents, specs and Best Practices, looked at what other states were doing and what the Feds were doing, and eventually designed & created the tool myself.  I did it at home on my own time and my own initiative working on it during evenings & weekends.

 

I took it to work and got my boss's approval to use it in our office and it reduced the time for a certain kind of task from days to hours.

 

My husband thinks I should patent it (or maybe copyright, I'm not sure -- it is software).  But my first question is:  whose IP is this?  I did the vast majority of the work on it at home on my own time, and contributed my own specialized expertise in this area.  On the other hand, I'm a salaried exempt employee, and the need for it arose in the course of my employment, so there's an argument to be made that even though I was working at home during evenings and weekends, I was still working for my employer when I created it.

 

So all that is a long way of asking, "Whose Intellectual Property is this?  Mine or my employer's? 

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I think it belongs to your employer.

 

Quote

if an employee does not have an employment contract and creates a copyrightable work in the scope of his or her employment. U.S. copyright law includes a statutory provision called the "work made for hire" doctrine, which provides that the employer and not the employee/author is the author of a work prepared by an employee within the scope of his or her employment. Because the employer is considered the "author" of the work, the employer owns the copyright in the work under Section 201.

 

Quoted from:

 

http://www.tms.org/pubs/journals/JOM/matters/matters-9608.html

 

You didn't get a signed waiver of ownership form your employer before you started on this project, did you?

 

Before you start making waves with your employer I suggest you consult an IP attorney to see if there is any way to salvage ownership out of this.

 

PS: After all your years on LDC I'm surprised you didn't take precautions before you started on the project.

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2 hours ago, adjusterjack said:

 

Why not ask your employer for a written waiver of ownership?

 

 

I bet they can't - but I can always ask.  (Public sector....)  I know they can't give employees surplus stuff that they're just going to throw out anyway, much to a lot of people's consternation.  For example, chairs, file cabinets, State vehicles, etc.  After an employee has driven the same pickup truck or sat in the same chair at their desk for 15 years and the State says, "Time to replace that ancient piece of junk," lots of people would like to be able to buy the chair (or pickup truck or whatever) themselves & take it home.  The State can't even sell it at FMV to the employee who's been using it.  They either have to junk it or sell it at a public auction to the highest bidder.  The joys of public service...

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5 hours ago, FormerLegalSecy said:

The State can't even sell it at FMV to the employee who's been using it.  They either have to junk it or sell it at a public auction to the highest bidder.  The joys of public service...

 

Bummer.

 

The insurance company I used to work for had sales of old equipment every couple of years and the sale was only open to employees. I brought home a lot of good stuff for a dime on the dollar.

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Assuming, based on a couple things in your original post, that you don't work for the federal government.  In that case, the first question is what your employer has to say about this.  The second question is whether there is any sort of agreement with your employer that arguably covers this.

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