Question regarding employee vs employer patent ownership

Question

I am employed by a big IT consulting firm or IT services industry in USA (IT and business consulting) at the senior management level (I am not hired to develop software or IT/non IT products, but only do consulting and management) and need help in understanding my patent and idea rights.

I have signed a pre employment NDA which says following things listed below:

Employer and Employee agree that "Inventions," is defined in this Agreement to include any and all new or useful ideas, developments, discoveries, improvements, designs, formulas, modifications, trademarks, service marks, trade secrets, and other intellectual property, whether patentable or not (including without limitation any technology, computer programs, software, software program code, logic diagrams, flowcharts, procedural diagrams, computer programming techniques, test, concept, idea, process, method, composition of matter, formula or technique), and all knowhow related thereto, which Employee conceives, makes, reduces to practice, or develops, solely or jointly with others (i) which relate to the actual or contemplated business, work or activities of the Company, (ii) which result from or are suggested by any work which Employee has done or may do on behalf of the Company, or by any information that Employee may receive by virtue of Employee's employment by the Company, or (iii) which are developed, tested, improved or investigated either in part or entirely on time for which Employee was paid by the Company, or with the use of premises, equipment or property provided, owned, leased, or contracted for by or on behalf of the Company "

I want to work on my ideas/concept on the weekends and other non-working hours, and don't want to use my company assets (computer, software, hardware) or workplace (I work from home or work directly on client site)

What are my patent rights and ownership options in the scenarios listed below:

1. What ideas and concept can be patented by me on my name like electronic gadget, hardware's, home appliance unit, toys or any non-IT service based ideas. Do I need to disclose/assign such kind of ideas with the company or can directly patent on my name?

2. If I want to develop a software/mobile application based idea and patent it that has nothing to do with my company business model or its service offerings, then what’s my rights to patent such idea?

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Thanks for your comments. I did asked the company but they kept forwarding me the NDA rather then answering to my specific question. I live in state of Georgia.

Answer 1

Almost every engineer I’ve ever worked with has side projects.

It’s above board and legitimate. But be paranoid. Assume your friendly reasonable manager will be replaced by a vicious snake.

Don’t discuss your side projects with anybody on company time or on company property. Be very careful never to mention your side projects with your company’s email address, or to store anything on your work computer or corporate server. Don’t even add your company email and projects email accounts to the same mobile phone. Document your scrupulous separation of work and personal assets. Assume you are preparing evidence for discovery in litigation.

Don’t use any information that could remotely be construed as your company’s trade secrets. Don’t even base your feature set on marketing knowledge you have gained in the course of your employment.

Usually there’s no issue but I’ve seen an employer kill an employee’s mobile app because they were planning on being in the same general market (unbeknownst to the engineer). Just be careful.

If your employer is Apple, maybe take up herding goats as a side project instead.

Answer 2

It depends on the state. E.g. California has copyright law most favorable to employees. I think such NDA would be invalid in California. But if idea and patent it that has nothing to do with your company business you are safe.

Answer 3

You left off the last part of the paragraph (I think), where it says "is owned by the company". This language is going to be important because of a Supreme Court case called Stanford v. Roche. Basically, even if the contract says you're obligated to assign your invention to the company, the company would need to enforce that right by suing (under state law) to force the inventor to actually execute the assignment. Most companies reworked their agreements after Stanford v. Roche came down, but if you provide the full agreement to your lawyer, the lawyer should be able to tell you what it means in light of that case.

There is also a part of that agreement that I think many courts would have issues with. Basically, the portion that says the company owns any ideas generation by use of "any information that Employee may receive by virtue of Employee's employment by the Company" This raises the issue of residual information. That is, you may learn things at the company which you use 20 years later in a different invention. You may not even know where the information came from by the time you use it. I think that provision may run into some overbreadth issues.

Either way, if you're looking at developing anything valuable, it is totally worth talking to a patent lawyer in advance. Alternatively, if the company is willing to contractually release you from the obligations, you're home free -- and it never hurts to ask, does it?