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  1. #1
    Join Date
    Feb 2019
    Posts
    2

    Default Should You Accept an Intellectual Property Clause in Your Employment Contract

    I am about to sign a contract of employment with a Uk company based in my own country.
    My job requires me to create IP works and assets involving existing IP that is owned by said company.
    However, before I sign the contract, there's an employment clause that I am unsure of how to interpret so I would like to ask experts in this forum about it.

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    12) Intellectual Property:
    If you, either alone or in conjunction with any other person create, invent, devise, develop or originate any design (whether registrable or not), work or other Intellectual Property in which any Intellectual Property Right may subsist, you shall immediately disclose the same to the company. You also hereby confirm that, all such Intellectual Property therein will be owned by the Company. Insofar as any Intellectual Property Rights in such Intellectual Property become vested in you, and for greater certainty, you hereby unconditionally irrevocably assign to the Company the copyright and all other Intellectual Property Rights for the full term in which such rights exist or are capable of existing throughout the world.

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    My concern is this:
    Does any original IP created by me during my employment period belongs to the company, even outside of working hours? Or it only applies to existing IPs that do or do not belongs to the company?
    I asked the HR about it and her reply was any and all IPs. But from what I read, it doesn't seem like that is the case.

  2. #2
    Join Date
    Sep 2010
    Posts
    19,901

    Default Re: Ip Clause in Employment Contract

    The company can certainly make claim to almost anything arising out of your employment even if you are doing it on your "own time" (which doesn't really exist for an exempt employee). If you want to guard some independent intellectual property while working a day job, you'd best get an agreement with your employer in advance. We always had sweeping IP employment agreements like the above. I had one employee who designed racing boat hulls on his own time. We wrote a specific exception in to the agreement for him.

  3. #3
    Join Date
    Oct 2016
    Posts
    4,301

    Default Re: Ip Clause in Employment Contract

    Is your "home country" the US?

  4. #4
    Join Date
    Jul 2018
    Posts
    2,745

    Default Re: Ip Clause in Employment Contract

    Quote Quoting Magnus Wong
    View Post
    I am about to sign a contract of employment with a Uk company based in my own country.
    What does "my own country" mean? Does the contract say that it is governed by a particular jurisdiction's laws (since the employer is a UK company, it probably says it's governed by UK law)?


    Quote Quoting Magnus Wong
    View Post
    If you, either alone or in conjunction with any other person create, invent, devise, develop or originate any design (whether registrable or not), work or other Intellectual Property in which any Intellectual Property Right may subsist, you shall immediately disclose the same to the company.
    When capitalized terms appear in contracts, they are typically defined somewhere in the contract. Is the term "Intellectual Property Right" defined in the contract? If so, what is the definition?

  5. #5
    Join Date
    Feb 2019
    Posts
    2

    Default Re: Ip Clause in Employment Contract

    Thank you for all the replies.

    My country is in Malaysia, and this company is a UK company with a branch office in Malaysia.
    I believe the contract is within jurisdiction of Malaysian laws, not UK laws.

    Well, in any case, as long as I don't declare or publish any original IP works during my employment period I guess I should be fine, right?

    Anyway, thanks again for all the help.

  6. #6
    Join Date
    Jun 2006
    Location
    Massachusetts
    Posts
    24,521

    Default Re: Ip Clause in Employment Contract

    No one here knows anything about Malaysian law, or even UK laws. This is a US board and deals with US laws. Malaysian law is not the same.

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