Prior inventions, unpatented, pitched to an employer.

[httpwebwitch]

I need advice.

Early last year, I built a truly awesome data architecture and processing routine, to accomplish a goal for my own business flagship venture. (e-commerce related)

Later in 2011, I was hired into a senior developer role at a blue-chip internet company, largely because of my prior experience in the same business realm.

Right now, they've got a system that is underperforming. It's actually the same problem I solved for my own business - the problem I spent weeks to identify, research, invent a solution, implement, optimize, and smooth out the technical challenges.

This idea is not patented. I'm not even sure if it's patentable, or if it's worth patenting. But for my employer it's probably worth at least a few thousand bucks.

The solution I'd propose doesn't belong to them. It belongs to ME. I invented it and solved it before I was hired. It's already implemented and in place on my own site. It's no longer just a vague set of skills on my resume; it's a significant chunk of intellectual property.

I'll admit I'm a bit confused. I feel that as a good salaried employee I should be helping them to solve their problems, but I also feel like in this instance I should not be handing over piles of my own Intellectual Property.

[mack]

I should not be handing over piles of my own Intellectual Property.

Totaly!

My suggestion, forget you own the other company and think of yourself as employed by both. Should you do work for company A and spend long potentially billable hours working out the solution then hand it over to company B?

Just because you don't bill yourself, it doesn't mean your time is free.

What you could do is describe the problem and solution to your employer and advise them that you have experience with the very same issue. But you had to invest a lot of man hours into resolving the problem. Perhaps go so far as saying you have looked into the possibility of patenting it. (you mentioned it here thats enough) that way they will know that you are able to solve it, but have an intellectual property issue with simply handing over code.

I would also ask them to sign an NDA just to enforce the possible patent issue.

You simply can't do nothing, because imagine if your employer just advised you to resolve it, you again do the research and solve it, what if your employer them seeks to patent it and succeeds?

You will probably gain a lot of respect by having the solution, no one expects anything for free, it just doesn't work that way in the enterprise. You just need to negotiate a fee and NDA with your employer.

A few grand will probably be cheaper for them that having to pay the going rate and whatever downtime losses the problem is generating.

Mack.

[DeeCee]

Have been in that same position for decades until I "dropped out" of having an employer.

It is a mute discussion until you read through your contract and your employer's employment policies, which you accepted when they hired you (and later revisions typically accepted by continuing your employment and pay-check after they revised the policies).

By normal law, anything you do directly for the employer is work-for-hire, unless contract says otherwise. By normal contracts/policies if the company was smart enough, anything you do while under employment contract (even if you do it in your living room at home) falls under "work-for-hire" and belongs to your employer. Even patentable ideas. Especially of course if those "ideas" relate in some way to products or systems that already belongs to your employer, which seems to be your case. But normally even unrelated ideas.
A normal company cannot have their employees use company "trade secrets" about their systems to be used by employees that go home and think up, implement, or patent ideas that relate directly to the company's trade-secrets.

That is the nature of being an employee and having access to identifying a company's areas of potential improvements. The employer can validly say, that without access to their internal information, you would never have had this idea in the first place.

But each case is special.

See [en.wikipedia.org...]

[edited by: DeeCee at 4:52 pm (utc) on Feb 24, 2012]

[Marketing Guy]

Depends on your current employer really. Do you think they are likely to reward you for your contribution or will they expect it for free?

I overheard an interesting conversation my boss had with colleagues today - the agency is planning to move into direct marketing, but has zero experience doing it (and frankly has a poor track record of thinking they should be doing something and doing it badly - part of the reason I'm leaving for a new job). So the boss asked staff to source examples of their previous design work (with other employers) which the agency can use to pitch for business.

In some situations, I'd be happy to use my past experience to help my current employer, but frankly if it's entirely a one way relationship, then I really wouldn't bother.

Interestingly the same boss has just grabbed a print out of an infographic we did this week (first one the agency has done) to pitch to another client. I came up with the idea, briefed it to the designers and launched it via our client's social channels, etc. There is zero social media experience in the company, so I have no idea how they plan to launch the next campaign after I depart in a few weeks. Probably just planning to post it online and hope for the best. :)

The point is, as Mack says, think of it as a business decision. Is your employer someone you want to get into bed with in this respect? Or are they likely to expect it for free?

And, from a marketing point of view, are there other companies that are likely to need your product as well? Perhaps packaging it as a product and offering it to your employer as a test run might be a good approach proir to selling it on scale?

[DeeCee]

Marketing guy,

As a developer I have been in that position too. I had a good idea, which my employer (a small company at the time) did not initially want to invest (my) time on. I instead as a typical geek went home and built it in my spare time.
After the fact when they actually saw it, they changed their mind and decided to market it.

By rule, this new software belonged to them. Despite being developed entirely on my own time. So they could do what they wanted. Fortunately they chose to give me a nice chunk of money as a one-time payment for my spent time, but they likely did that only to keep me in a good mood, because they did not have to. They had already "paid" by employing me.

[rocknbil]

What would you do if you pitched something like Magento? Your company would operate under Magento's TOS (which is O.S. for most versions, but you get the idea.) I'd go ahead and contact a lawyer who will help you define the patent, get it patented, then pitch it, separating the personal attachment like the Magento example.

[httpwebwitch]

Thanks for the insightful responses!

some key points:

1) For clarity, forget that I invented the solution as an employee of myself, or anything like that. Instead, just say that I am the owner of it. The work-for-hire legalese is irrelevant.

2) The IP in question was completely finalized and implemented before I became an employee. I know that if I invented it today, even if it's built on my own "personal" time (if there is such a thing), it would belong to my employer. That's in my contract. But that's not the case here, and I can prove it.

Some options:

1) I can withhold the solution and not give it to my employer. For them, I invent something new, possibly better, likely not, but definitely different.

2) I can recreate the same thing all over again, without referencing my original work -- just like all those Mosaic employees did when they mutinied to build Netscape. (fascinating bit of history there, worth a read). In return I'll have a few weeks of easy work I already know how to do, and the accolades for pulling this amazing complex thing out of my hat

3) I try to patent it NOW, and have that in my pocket. Then I tell my employer I have a patented idea that they could license from me, or offer to sell them the patent itself. That sounds like a complicated thing to do... doesn't patenting take a long time, and cost me a significant chunk of coin?

4) I can try to do the same thing, but without the patent in my pocket... hmmm I don't think they'll be receptive to that. It feels kind of like ransom or extortion. "Pay me extra for this, or I'll build something not-as-good". ha ha ha ha no.

I'd be really keen to hear from anyone who has negotiated this kind of situation before!

[lexipixel]

You say it's a blue chip -- instead of cash, ask for some stock. That shows you will continue to have an ongoing interest in the company's success, and you get something "of value" for what you bring to the table.

Clearly document that it was built and in use before you came to the company, and offer it under a "non-exclusive right to use", (if they want "ownership" of the code, flip the negotiation so that they own it and give you a non-exclusive right to use in your own products / services).

Technology moves so fast... I've had several of these opportunities in the past and decided to hold out -- only to find my technology was outdated and had little to no value 6-12 months later.

Strike while the iron is hot.

[ken_b]

Some options:

Where's the option to consult with an I.P./patent lawyer?

That should be your very first action if you really believe/think that your prior development is in any way patentable.

Any other possible course makes me want to scream.... call an I.P./patent lawyer!

[edited by: ken_b at 3:42 am (utc) on Feb 26, 2012]

[Panthro]

Patent it! At least consult with someone. You don't know if the USPTO will consider it patentable and for all you know it is. If you want some quick advice from a patent lawyer, sticky me I work with one (I'm assuming this is in the U.S., but may be mistaken).

[httpwebwitch]

Quick update...
Patenting is not an option. Financially. Anyone who claims it can be done for under $5000 is lying ... I spoke briefly with a colleague who has gone through the process multiple times, and he said I'd better be prepared to pay $20,000 - minimum.

So, what now?

[ken_b]

Patenting is not an option.

If your prior work met the needs of your own site, and appears to meet the need of your employers site, isn't it likely to meet a similar need on other similar sites?

If so, perhaps you could market the solution to other sites making the patent cost more manageable.

But at any rate you still need to consult with an I.P./Patent lawyer, if nothing else you need to see how, or if you can protect your prior work with a good contract, if a patent isn't possible.

.

[Key_Master]

Patents are prohibitively costly. Lawyers love to spend your money. In the end, you might find a small portion of your solution is already patented or find that the solution itself cannot be patented. That is a lot of money to take a gamble with.

I suggest another option. License it out to your employer. Maybe you can work out some kind of deal that would net you a very nice bonus without having to give up any rights to your work.