New job - contract clause on Intellelectual Property Rights

[PHCorvette]

Hi all,

just received a contract for a new position and I need to check on the IPR side of things.

I currently own several domains either with business material and tools (produced and owned solely by myself) or with ideas to be set up and running.

None of these items are linked to the new companies business, however, in the contract it states the following:

Contract said:

You shall provide the Company with full written details of all:
(a) inventions, ideas and improvements, whether or not patentable, and whether or not recorded in any medium ("Inventions"); and
(b) patents, rights to Inventions, copyright and related rights, trade marks, trade names and domain names, rights in get-up, rights in goodwill or to sue for passing off, rights in designs, rights in computer software, database rights, rights in confidential information (including know how and trade secrets) and any other intellectual property rights, in each case where registered or unregistered and including all application (or rights to apply) for, and renewals or extension of rights and all similar or equivalent rights or forms of protection which may now or in the future subsist anywhere in the world,
created or acquired by you, wholly or partially, in the course of your employment (however and wherever created) ("Employment IPRs"), promptly upon creation.

This I understand, its simply saying "look, tell us what you have now as a line in the sand so anything that isn't on this list in the future may be claimed as company IP.

The fly in the ointment that I need to query is the following clause that appears soon after:

Contract said:

You hereby irrevocably and unconditionally waive all rights that arise under Chapter IV of Part I of the Copyright, Designs and Patents Act 1988 (whether before, on or after the date hereof) in connection with your authorship of any works mentioned in Clause 15.1, and to any similar rights wherever in the world enforceable, including without limitation the right to be identified as the author of any such works and the right not to have any such works subjected to derogatory treatment.

The work I have produced has taken me a long time and is based on over 20 years industry knowledge, the new company is not in my industry background instead they are looking to use my knowledge internally to help them.

Thanks

Are they trying to say that as a condition of joining the company I have to relinquish all rights to my own IP and give it to them?

[marshalla]

PHCorvette said:

Are they trying to say that as a condition of joining the company I have to relinquish all rights to my own IP and give it to them?

Don't know - what does Clause 15.1 say ?


And you seem to be misinterpreting the first clause you quote - it says you will tell them promptly about any IP which arises from your employment by them.

[PHCorvette]

15.1 is the first quote, sorry I missed the ID off.

Thanks for the clarification on it being during employment. In that case its standard fare.

[marshalla]

PHCorvette said:

15.1 is the first quote, sorry I missed the ID off.

Thanks for the clarification on it being during employment. In that case its standard fare.

That's what it looks like to me. AFAICS it kicks in when you become their employee and doesn't appear to lay claim to anything which pre-dates that unless you've done it in relation to that employment.

[PHCorvette]

Cool. Usually my work gets claimed as IPR as I do it during or in part of employment linked to the product but as I've taken a 3 month break the current material is wholly owned by myself.