Intellectual Property from Before being Hired?

Let’s say, for example, you have a portfolio project that you did solely on your own that generates interest from a prospective employer. The product design has a number of novel features. After being hired and working with new employer for a while, they want to use a couple of those features in a new product. The features aren’t patented but do hold some intrinsic value. At the same time, don’t want to bite that hand that feeds you either.

Any suggestions? Kind of a delicate situation.

No real knowledge of that end of things, but I’d probably get a lawyer involved before you agree to it. I’d imagine you want to set up some kind of royalty deal where they pay you for rights to use the tech, or outright buy it from you.

Unfortunately if they aren’t patenting those features, it’s hard to say “hey I brought those ideas when you hired me” and ask for a royalty.

Generally depending on the contract you signed when you got hired, there may be some stipulations around existing IP and what happens to it when you come in.

You can mention to your boss what great and valuable ideas they were and maybe he can give you some type of bonus or recognition, but I wouldn’t hold your breath too much.

Are you employed under a contract? Or are you at-will?

Sounds like your employer wants a freebie.

Unless they are in the practice of giving you freebies, I expect a fair wage for a fair days work. I expect my employer to act professionally.

And perhaps the hand that steals from you isn’t one you want to be dining with in the first place.

Maybe I’m missing something but if he’s employed I’m assuming you are a salaried employee, so I don’t think any of this really consists of stealing. You are still employed by them and receiving a pay check for your good work.

If you are on a salary and there is no bonus structure for this then it is what it is - especially if there is no existing IP in place. Unfortunately that’s the nature of IP - if you’re the inventor of an unpatented idea there is no actual security in that position.

Now if you designed a product as part of “Designer Consultancy LLC” and registered the IP of your idea to that company, you could be in a situation where you licensed, sold, or allowed that company to be acquired by your new employer.

I don’t think your employer is in the wrong here in any way. If it was a good enough idea to patent and your employer has a structure for IP bonuses, then you’d be in good shape but it sounds like that isn’t the case.

Thanks for all of the insight, guys. I don’t think my employer is necessarily in the wrong, but I also don’t think I’m wrong in thinking that I should be properly compensated for a design that I fully conceived on my own before we had ever even met. It’s dicey. I certainly don’t want to create any tension. However, I’ve gone for far too long undervaluing my skills, ideas and experience. I believe this is one of those times when I really need to stand up for myself. You would think they would do the honorable thing by offering some sort of bonus without me even bringing it up, but I’ve painfully learned over time that hoping for the best often leads to disappointment.

Hard IP has a patent, it can be protected, defended, litigated. Soft IP has respect, royalty deals are cut every day on soft IP out of respect for the work someone did on something, not just the threat of litigation.

Ideally the employer would recognize that they are asking for something a little bit out of bounds and offer/discuss some sort of compensation. Likely this is too idealistic a view. They make also take the view that everything they have been exposed to, whether in the market or internally is fair game as input. This is personal negotiation, I think you have a right to have a discussion.

Two ways to internally rationalize. These are the methods I have used in the same situation.

The idea is one that you would like keep the idea to work yourself in the future. Many of my ideas lose value with time, so this has not worked out so well for me. When I go into a new situation there are always new ideas to explore and the product landscape has changed. The products that I kept in the reserve bin tended to stay there.

Let the project see the light of day under the financing of your employer. They will move the ball down the field and worst case you can pick the ball up further down the field if/when you go solo.

To be clear, legally, you do not have a leg to stand. IP is first to file now, not first to invent.

But that is irrelevant.

This is about professionalism. My employer does not give me anything. I earn my wage. As I don’t give them ideas. They compensate.

If it were me, I would figure out a number. How much of your work are they going to use? The idea? Sketches? Renderings? CAD? I would be completely fair with how far you went and what they will use. How many hours did that take? Multiply by $125 (minimum) for consultancy pricing. Or take your current salary, determine hourly and add 30-40% for their all-in cost.

I would have that calculation and number ready for a frank discussion. And depending on the outcome of that discussion, you will need to decide what kind of relationship you are willing to accept. Because for me, the relationship is the bottom line.

If you’re ready to have that discussion also be prepared for it not going your way, getting nothing, and hurting your relationship with your employer.

I take a different look at things.

You were hired for your experience and skills. The designs or solutions you have done in the past are all a part of that package and make up what your present self if worth in $ and ability. This is what got you hired.

While it’s difficult to say on the specifics (ie. what the features are, how novel they are, etc.), I see the past solutions as part and parcel of your current value, and not something you can pick out and value separately. Often as designers we use a solution or experience from our past to solve a present problem. This is why a senior designer with 10 years makes more than a junior with 1 year. They have 10 years of solutions and approached filed away in their head.

I wouldn’t ask for anything specifically, but if you like you can make a specific discussion around those features.

Keep in mind though that as we all know, ideas are free/easy/cheap. it’s implementation that is hard/expensive. If all you had before was an idea, and now it can be a thing, I’d say roll with it and feel good you contributed something positive to the result. You can always down the road show that the feature was part of your portfolio work prior and was included in the final product. That’s a +.


I agree with that in principle. But experience is more of an intangible where an idea is concrete. Yes, as a whole, I am compensated for my past experience, but not for a very specific item from my past.

And yes, ideas are a dime a dozen, that is why I recommend an honest assessment of what the deliverable the company will receive. If it is just the idea, I wouldn’t get into a pissing match, I’d give it to anyone who wants it. But if I spent a significant (which, of course, is a subjective measurement) amount of time developing the idea and the company wants the developed idea, I would want to be compensated.

Cyberdemon - Of course a frank discussion can go either way. Remember, it was the company that initiated everything and it is up to them to make the initiated request acceptable to the relationship. I have no problem ending a negative relationship. atmo, others should do the same.

The difference IMO is that if he wanted to get value for that idea, he had an opportunity to do it - when he got hired.

If he felt that he came with a million dollar idea that was coming into the hiring negotiations, it should have been negotiated at that time. If the idea had died on the vine, it would be valueless. If it was valuable enough at the time of hiring, it would’ve been worth discussing then.

For example lets pretend you are a software engineer, and just spent a year working on a new way of processing instagram filters. If you get hired by Facebook because they want you to work on their photo application, do you wait until you launch the product and say “hey by the way, wheres my bonus this was an awesome idea?”.

Or would you say at the beginning “I’m the most qualified instragram filter designer in the world, so I want $250k a year”?

I think you are viewing that he is in a negative relationship, I don’t necessarily get that vibe. I get the vibe that this is a normal relationship but he’s upset that he feels like he left something on the table. Sometimes that is just a life lesson learned, not necessarily anything you can do about it other than learning the techniques which can get you leverage. Right now I see no leverage on his part, other than promoting the fact that he did good work.

If you’re doing great work and have been there long enough, why not ask for a promotion and site your great ideas as reasons why you think you should move up?

Agreed, but I’d discuss it with a patent lawyer. If you have time stamps on any of your designs and ideas they can be used to prove origination of concept. Whether or not you can now file patents for those concepts while under your current employer depends on the legalese of your contract of employment, which a patent lawyer may be able to determine.

Knowing whether or not you can file patents on these concepts could help you determine how you want to approach your employer about it, ie. give you an idea of how much leverage you actually have.

I don’t necessarily see it as a negative relationship, but I do see potential for it.

I am just simply making a clean separation between past projects and current reimbursement.

With employment, I am receiving payment for the deliverables I create today and tomorrow for Facebook.

Now, Facebook comes to me and says, “that deliverable you created 2 years ago before you came here is cool, we want to use it, for free.”

So if I make that deliverable today or tomorrow, Facebook will reimburse me. But if I made that deliverable 2 years ago, they don’t have to reimburse me. Why’s that? Work is work, whether I did it yesterday or I do it tomorrow.

I think what we’re distinguishing between is a deliverable, a physically existing artifact that has been designed vs an idea.

If my employer said “hey dig up that CAD file from 2 years ago and give it to us”, that is one thing.

If I am working on a project and it has a power switch and I say “hey, I had this awesome idea I did once before for a 3 way power switch with XXX functionality it would be perfect here” I am not delivering much other than an idea that is part of my experience.

I specifically signed paperwork around existing IP and IP that was in process when I got hired because it needed to be disclosed to prevent any conflicts of interest specifically around this. It basically stated I can retain rights to anything I was working on or had IP on but from that point on the IP would belong to my employer.

Thanks for all of the input! When I first started speaking with my present employer, there wasn’t any job available. The discussions revolved around some of my designs. Having started my own company a few years ago to bring to market one of my concepts, I was seriously considering giving it a shot again with the ideas that are currently being evaluated for production. I can understand if they were just pie-in-the-sky, wild arse ideas, but they weren’t.

Probably the best thing to do is to keep quiet and simply hope they acknowledge the fact that it was something I brought to the table independent of my employment. I simply want to be fairly compensated.

Timing, asymmetrical information, expectations.

Modern Man wonders whether the employer clearly communicated up front their interest in or intent or potential to use 6ix’s previous ideas when they were in the interview and job offer/compensation negotiation process or did the employer spring this proposition after they agreed to the terms and 6ix had started working for the company.