Help putting together an Open Source Friendly contract but does not allow day job work to be Open Sourced

Question

So I just was hired at a place that had only one Developer and that was the co owner. Their employee handbook had something to the effect of the following.

All IP, inventions or software you develop while at X company is the property of the company. Additionally you will have to provide a list of all prior inventions, software or IP developed prior to working for company x.

This is an issue for me because I have both side projects and occasionally contribute to open source stuff and would like to continue to have the ability to to both.

I talked about it with the owner and he agreed to making changes and asked me for an outline that is fair for both parties. He would take that to a lawyer and they would go over it and apply it. So with that I'm looking for some wording I could submit to that effect to helping me put this together in such a way that I and any other software developers are protected as well as company x and its software. That or a resource or guideline for this sort of thing.

To clarify, the company's software isn't allowed to be made open but the employees will be allowed to work on side project both of an open-source and private nature as long as they don't come to compete with the company's best interest. If it helps we are in the USA.

Answer 1

Company ownership of software that you develop is a legal matter; see Joel Spolsky's excellent description and analysis for more details. As such, it's really up to a lawyer to figure out wording that's acceptable.

Regarding the rationale of asking for past work, see this question.

If you're looking for non-legal-quality wording, I've seen a corporate code of ethics that includes language similar to the following:

We may wish to pursue employment or opportunities besides our employment with Acme. We will not do so if it competes with Acme or interferes with our ability to fulfill our responsibilities to Acme.

We may develop ideas, processes and technology on Acme's behalf. This “intellectual property” belongs to Acme. Each of us must assign the rights to any such intellectual property to Acme.

This kind of language is probably not rigorous enough for a contract and may not work in court, but for an employee handbook, it should be fine.

Answer 2

When it comes to formalizing contracts, you shouldn't rely on what people on the internet tell you. Any single word needs to be chosen carefully, and when you are careless with the wording, then either the whole contract is void because it contradicts the law or it might says something which is completely different from what you actually wanted it to say.

The sentence in your question above is a good example for the latter. What they want to say is likely something like:

"We would like to know what obligations and ties you still have to prior projects you were involved in".

But what it actually says is:

"Give us a list of every idea you ever had, every single program you have ever written (published or not) and every piece of art you ever produced, including that picture you drew when you were three, and when you forget something and we find out we can fire you immediately".

Hire a lawyer specialized in IP- and employment law. Have a meeting with the lawyer, an employer representative and an employee representative, explain to him what the goals of the contract are ("We would allow [scenario A] but we don't want [scenario B] to happen"), and let him write the contract.

Answer 3

Clauses like that are sometimes constrained by local law. For example, in Washington state (USA):

[...]an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee's own time, unless (a) the invention relates (i) directly to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this state and is to that extent void and unenforceable. [ Source ]

Also, employers may be interested in major contributions or previous inventions for reasons that don't include ownership. They may be looking to find out if there are any licensing or IP conflicts that could arise from previous projects.

All that said, only your personal lawyer is qualified or can be trusted to look out for your interests and dispense advice on how to approach your specific situation.

Answer 4

While I agree with the warnings to be careful here, they fail to address two very important issues:

1. Your boss is a nice guy and is acting in a spirit of helpfulness and cooperation.
2. Since a lawyer is going to be asked anyway, why ask us?

Presumably you and your boss can agree on something like "things done on company time, or at company request, belong to the company and the rest belongs to you" - or whatever you both find acceptable.

Have the lawyer translate that into five dollar words and wrap it in a non-complete clause & that should do it.