Intellectual property while employed (UK/USA)

Question

I work for a USA based company but I live and work in the UK.

I'm a software engineer and I was curious about the wording around intellectual property on my contract.

Lets say the company I work for operates in any random sector (for example automotive vehicles or banking). I work on their apps/websites as my day job.

In my spare time, I'm trying to build an app related to travel/exercise which I intend to launch on monetize (somehow).

Is my assumption correct that because I'm not creating intellectual property related to the company's domain, it wont be theirs if I were to launch my own app? Or at least they're very unlikely to try to claim it.

Also worth pointing out, the app I'm building was my spouse's idea. However all the code and design have been done by me. Not sure if that changes things.

They also have a non-compete clause which also wouldn't be breached as the subject matter and market is completely different.

The company has a "10% time" perk which means that for 10% of my time there, I can work on personal development. So I can learn stuff, or build stuff etc etc. This means though that I have occasionally used company equipment to work on this side project.

The exact wording on that perk in my perks document is:

Personal development

• ...
• 10% time allows our Product Development teams to get real time to develop ideas that fall outside of the daily norms.
• ...

I am going to ask HR soon, but didn't want to sound any alarm bells so i thought I'd ask the community first :)

Thanks!

Intellectual property contract clause wording below:

Clause 12.3 is particularly concerning...

12. Intellectual Property & Moral Rights

12.1 All or any Intellectual Property Rights (as defined below) created by you in the course of your employment with the Company will be and automatically become the exclusive property of the Company and you will at the request and expense of the Company execute all such documents and do or refrain from doing such things as may be required by the Company in order to vest the right, title and interest in and to the Intellectual Property Rights in the Company and you hereby irrevocably appoint any representative for the time being of the Company to be your authorised attorney to do all such things and to execute all such documents in your name and on your behalf as may be reasonably necessary to secure that the full benefit of the Intellectual Property Rights is obtained by the Company. A certificate in writing signed by any director or the company secretary of the Company that any instrument or act falls within the authority hereby conferred shall be conclusive evidence that such is the case so far as any third party is concerned.

12.2 If at any time during the course of your employment you (whether alone or with any other person or persons) make any invention which relates to the business of the Company, you shall promptly disclose to the Company full details, including drawings and models, of such invention to enable the Company to determine whether or not it is a Company Invention (as defined below). Decisions as to the patenting and exploitation of any Company Invention shall be at the sole discretion of the Company. If the invention is not a Company Invention, the Company shall treat all information disclosed to it by you pursuant to this Clause as your confidential property.

12.3 “Intellectual Property Rights” means any and all intellectual property or industrial rights of any description anywhere in the world (whether registered, unregistered to cover registerable or not and any applications or rights to apply for registration of any of the enclosed) including but not limited to any patents, trademarks, the domain names, registered designs, copyright, product names and logos, inventions, databases, discoveries, specifications, formulae, process, know how, trade secrets, confidential information and any analogous or similar right in any jurisdiction.

12.4 “Company Invention” means any improvement, invention or discovery made by the Employee which applying the provisions of Section 39 of the Patents Act 1977 (as amended) in the determination of ownership is, as between you and the Company, the property of the Company.

12.5 The provisions of this Clause 13 will remain in full force and effect notwithstanding that after any relevant Intellectual Property Rights or Company Invention has been made or originated by you, your employment with the Company may have terminated for any reason. 12.6 You irrevocably and unconditionally waive in favour of the Company any and all moral rights conferred on you to the fullest extent permitted by law (by chapter IV of Part I of the Copyright Designs and Patents Act 1988 (as amended)) (e.g. the right to be identified as the author) for all work that you create during the course of your employment.

Answer 1

Be careful of the 10% time “perk”. It is not your own time. It is work time where you are self-directed. Any project unrelated to your work should be on your actual own time not dork time that is free of specific assignment.

Fortunately the section 39 of the UK patent law is short and relatively straightforward. It is focused on “the course of your usual duties” not on whose time you were on or whose equipment you were using.

It belongs to them if -

(a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or

(b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer’s undertaking.

Otherwise it’s yours.

See https://www.gov.uk/guidance/the-patent-act-1977/section-39-employees-inventions-right-to-employees-inventions