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Ben Jones
Ben Jones, UK Lawyer
Category: Law
Satisfied Customers: 47418
Experience:  Qualified Solicitor - Please start your question with 'For Ben Jones'
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Good afternoon, I'm employee in a company since one year,

Resolved Question:

Good afternoon,
I’m employee in a company since one year, I start to develop a software product before to join this company, it was six months before to join the company, I develop all the software during the evening and after hours.
Regarding the intellectual property the company contract is quite clear, below a link with an abstract of it.
http://1drv.ms/1MmvqFE
My question is:
Can the company claims the intellectual property of my software if I’m going to release it next week?
How can I avoid that?
Any your advice will be really appreciated.
Submitted: 1 year ago.
Category: Law
Expert:  Ben Jones replied 1 year ago.
Hello, my name is***** am a solicitor on this site and it is my pleasure to assist you with your question today. Why do they say they are entitled to it?
Customer: replied 1 year ago.
I'm employee in this company and inside my contract there is a particular section regarding the intellectual property , I attached you the part, please have a look.
I need to know if they can claim the software I develop privately and out of my working hours
I'm a evangelist in the open source community and I need to deploy my personal job on internet but I want to keep my intellectual property on these.
I need to know if exist the possibility that they can claim the software that I develop by my own and out of the working hours.
Customer: replied 1 year ago.
many software companies are keen to claim the intellectual property of a software because used by many people and by other companies, this is not correct but inside the contract I read that they can claim it, I don't know if they can really do that and if is legal what I read in this contract, they mention that they can claim everything about what I do, in and out of the working hours, I start the development before joining this company and I worked out of the working hours.
Expert:  Ben Jones replied 1 year ago.
As an employee the law will generally be against you in two separate ways. First of all there is a specific contractual clause which assigns the IP rights to the employer. Secondly, even if there was no contractual clause, the law automatically assigns IP rights for work created by the employee to the employer. However, it will depend on what has been created. For both of the above to apply the work must be something created in connection with your employment. It must be something your employer has either asked you to do or something which would have been expected of you under the performance of your contract. Only in that case could it be claimed by the employer that the IP rights have been assigned to them. Any private work, unrelated to your job, cannot be claimed by the employer. I trust this has answered your query. I would be grateful if you could please take a second to leave a positive rating (selecting 3, 4 or 5 starts at the top of the page). If for any reason you are unhappy with my response or if you need me to clarify anything before you go - please get back to me on here and I will assist further as best as I can. Thank you
Customer: replied 1 year ago.
Make sense but I have a last question to clarify everything.
The problem is because I'm also Microsoft MVP on Application Integration ( https://mvp.microsoft.com/ ) and the activities that normally I do to maintain my private award could be related to any software company as this one.
The Microsoft MVP is an award related to the person and I'm MVP since 10 years, long time before join this company.
Can they claim like my MVP activities?
What options I have if I want to be sure that nobody can claim it , quit with the company and switch in contractor or create a limited company X and assign the software copyright to this new company X or any other options?
Thank you
Expert:  Ben Jones replied 1 year ago.
No one apart from a court can decide whether they will get it or not. If this is your main trade and most of the work you would do is related to that then it would be more difficult for the employer to claim rights over everything you have done, including in your private time. In that case they would need to narrow the work down to whatever can be attributed to the specific job you do with them. So there is nothing you can actually do to ensure that you retain IP rights over them in the current circumstances. You will have to end the contract you have with them because whatever you try whilst under contract with them they could still try and argue that IP rights belong to them. It is unlikely but they could do
Customer: replied 1 year ago.
make sense, I mean, the Microsoft MVP is my first and important activity since 10 years and I'm a very well-known person in the world community, I think is going to be hard for the company claims something that is natural part of my person and my activities since 10 years..
Thank you Ben now all is clear.
Do I have to do something to close the thread?
Have a good weekend.
Nino
Expert:  Ben Jones replied 1 year ago.
Hi Nino, the only thing still required of you is to leave a rating for my service - I think it is i the format of 5 stars you can select from. That will then close the question and process the credit for it. Many thanks and all the best
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