contract-law software business
Assignment of Inventions in Employment Contract for Software Development
<p>I have a contract that basically says this in the Assignment section:</p>

<blockquote>
  <p>To the fullest extent under applicable law, the
  Company shall own all right, title and interest in and to all
  Inventions (including all Intellectual Property Rights therein
  or related thereto) that are made, conceived or reduced to
  practice, in whole or in part, by me during the term of my
  employment with the Company and which arise out of any
  use of Company’s facilities or assets or any research or other
  activity conducted by, for or under the direction of the
  Company (<strong>whether or not (i) conducted at the Company’s
  facilities, (ii) during working hours or (iii) using Company
  assets</strong>), or which are useful with or relate directly or
  indirectly to any “ Company Interest” (meaning any product,
  service, other Invention or Intellectual Property Right that is
  sold, leased, used, proposed, under consideration or under
  development by the Company). I will promptly disclose and
  provide all of the foregoing Inventions (the “ Assigned
  Inventions”) to the Company. I hereby make and agree to
  make all assignments to the Company necessary to
  effectuate and accomplish the foregoing ownership.
  <strong>Assigned Inventions shall not include any Invention that is
  both (a) developed entirely on my own time, without use of
  any Company facilities, assets, ideas or direction and (b) not
  useful with or related to any Company Interest</strong>.</p>
  
  <p>...If I wish to clarify that something created
  by me prior to my employment, which relates or may relate
  to the Company’s actual or proposed business, is not within
  the scope of the assignment of Inventions under this
  Agreement, <strong>then I have listed it on Appendix A</strong> . If (i) I use
  or disclose any Restricted Materials (including anything
  listed in Appendix A) when acting within the scope of my
  employment (or otherwise on behalf of the Company), or
  (ii) any Assigned Invention cannot be fully made, used,
  reproduced, sold, distributed, or otherwise exploited without
  using, misappropriating or violating any Restricted
  Materials, I hereby grant and agree to grant to the Company
  a perpetual, irrevocable, worldwide, royalty-free,
  non-exclusive, transferable, sublicensable right and license
  to use, disclose, exploit and exercise all rights in such
  Restricted Materials, including any Intellectual Property
  Rights therein.</p>
</blockquote>

<p>And Assurances:</p>

<blockquote>
  <p>...<strong>I hereby
  irrevocably designate and appoint the Company and its
  officers as my agents and attorneys-in-fact</strong>, coupled with an
  interest, to act for and on my behalf to execute and file any
  document and to perform all other lawfully permitted acts to
  further the purposes of the foregoing with the same legal
  force and effect as if executed by me. </p>
</blockquote>

<p>I have a couple questions.</p>

<p>I have inventions which I'd rather not disclose, which I have documented by creating different versions and timestamping them. However, I plan on continuing to develop them on my own time as I work at a company. They are software related.</p>

<p>First, the first two highlighted parts seem to contradict each other. The first says whether or not during working hours, the second says it's fine if it's on my own time. Wondering if this is a problem for the contract. Also wondering how valid those statements actually are.</p>

<p>Second, they like most other companies want me to list my prior inventions. But I've asked this before to a lawyer and they said I can't simply list a title of a project such as "Photoshop-like image editor", I have to actually go into detail and describe it. And not just a few sentences, but paragraphs of detail. Not so much detail as to be like a patent in its thoroughness, but more detail than a few paragraphs PER INVENTION. But this is a security leak as I don't want to disclose my inventions even if they are simple, it's a matter of privacy. So the question is what I can do or what the reality is of the situation.</p>

<p>And last thing is, let's say this company, a software company, is in the field of Sales and Marketing. This means they have a robust application or suite of applications, practices, and tools like CRMs, machine learning stuff, APIs, etc. They also use lots of open source programming tools. Meanwhile, let's say my inventions are in the field of Programming Tools and Application tools. It's not <em>directly</em> related to Sales and Marketing, but it's related pretty closely to CRMs and machine learning tools, and APIs. It's not related to their specific APIs, but it's related to APIs let's say. The question is how the line is drawn on what is considered competitive inventions. If I were to invent a new machine learning algorithm while working as a marketer or sales person at a software company, if that is considered competitive and prohibited by the contract.</p>

<p>Oh, and "not useful with or related to any Company Interest" is very vague. The company could be interested in literally anything these days.</p>

<blockquote>
  <p>the first two highlighted parts seem to contradict each other.</p>
</blockquote>

<p>No, in this case they do not. The first highlighted portion refers to works or items produced "<em>for or under the direction of the Company</em>", whereas the second highlight refers to your creations that satisfy conditions (a) and (b).</p>

<p>Where contradictions actually exist, the doctrine of <a href="https://en.wikipedia.org/wiki/Contra_proferentem" rel="nofollow noreferrer"><em>contra proferentem</em></a> entitles you (the non-draftsman of the contract) to adopt the portion or reasonable interpretation that favors your legal position.</p>

<blockquote>
  <p>Also wondering how valid those statements actually are</p>
</blockquote>

<p>They are valid and become enforceable as soon as you sign the contract or your subsequent conduct reflects your acceptance thereof.</p>

<blockquote>
  <p>it's a matter of privacy. So the question is what I can do or what the reality is of the situation</p>
</blockquote>

<p>The reality is that you are asked to sign a contract that is abusive and ridiculous. </p>

<p>One vulnerability from describing your inventions (presumably in Appendix A) is that the employer gets "irrevocable, worldwide, etc" rights on them as soon as you "<em>use or disclose any [items listed in Appendix A] when acting within the scope of [your] employment</em>". This means that if instead of reinventing the wheel you share or apply any portion of your prior creations so as to enhance your productivity, you <em>knowingly</em> and <em>irreversibly</em> grant to the employer perpetual rights to those items.</p>

<p>Legal disputes regarding APIs can become extremely intricate. And, since judges usually have no decent background on IT, even those few judges with integrity are unlikely to grasp the key subtleties that would lead to a correct ruling.</p>

<blockquote>
  <p>"not useful with or related to any Company Interest" is very vague. The company could be interested in literally anything these days.</p>
</blockquote>

<p>Clauses which are too vague or excessively wide-encompassing are <em>supposedly</em> stricken as unconscionable, unenforceable, etc. However, I personally would foreclose upfront the risk of judicial hassle and decline the abusive contract.</p>

<p>Legal issues aside, keep in mind that you are <em>offering</em> your <em>expertise</em> (in terms of supply &amp; demand, you are on the <em>supply</em> side). This fact has a less derogatory connotation than "asking for a job". Accordingly, the relation between the parties should be more leveled.</p>
