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UKSolicitorJA
UKSolicitorJA, Solicitor
Category: Law
Satisfied Customers: 4312
Experience:  English solicitor with over 12 years experience
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I work at a company that is using my intellectual property

Resolved Question:

I work at a company that is using my intellectual property rights. There is no written agreement governing to the terms of use of this IP. Essentially my IP is a HTML listing template for eBay. This templates underpins their entire business operation. The company is now trying to constructively dismiss me, and I would like to monetise my IP. I have a meeting with them on Tuesday where (I assume) they will terminate my existing contract and offer me a much worse paid contract. I would like to ask them at that point to either pay for their usage of my IP, or immediately stop using it. Where do I stand on this matter?

Submitted: 2 years ago.
Category: Law
Expert:  UKSolicitorJA replied 2 years ago.
Hello,
I am assuming that you are not an employee and did not create the IP in the course of your employment.
Unless you have signed over your IP to the company, you own it and you have the right to ask them to stop using it without your consent or to pay you for it so that you sign over your IP rights to the company.
Alternatively, you may enter into a licence with them whereby they pay you royalties for the use of your IP. This licence may be non exclusive and for a fixed duration.
Hope this helps
Customer: replied 2 years ago.

Hi. Thanks for your reply.

I am am currently an employee of the company. However, they are trying to get rid of me by constructive means.

The template which they are using was created by myself before my employment (and is therefore my IP).

There is a vague clause in the contract which relates to IP. The relevant section is this:

"22. Intellectual Property Rights

You must disclose to The Company any product, process, know-how, design, writing or similar tangible or non-tangible manifestation of knowledge that you create, make or discover whether alone or jointly, in association with your employment or which is relevant to the company.

Any Intellectual Property is owned solely by the company and you must comply with reasonable requests to assist in the preparation or execution of all/any documents necessary for the protection and exploitation of any rights connected with Company Intellectual Property. "

I stress that the template they are using was created by myself months in advance of my employment. It was not a condition of my employment, and there is no mention of it anywhere in my contract. The only way it is "relevant to the company" is the fact that they are using it.

I also have emails from the managing director, where he states that he will not offer me a new contract unless I agree to sell him the IP rights of the template (therefore establishing that to both of our respective understandings, I solely own the IP of the template). We didn't agree a fee and we carried on working to an old existing contract (which contained the above clause).

On a final note - if I ask them to stop using my template, can I ask them to stop using it with immediate effect? For example, if I give them an option to buy the template for a certain amount of money, and they refuse, then can I ask them to stop using it with immediate effect (with the consequence of having to pay the fee I am asking if they do not), or am I obliged to offer some "reasonable" time scale for them to comply?

Thanks a lot,

John

Expert:  UKSolicitorJA replied 2 years ago.
If you created the IP before your employment, then it is yours and you may ask them to stop using it immediately if you do not reach an amicable agreement on the amount due to you.
All the best
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