Ask HN: Discussing Side Project with Current Employer’s Lawyer

[park_tech]

I have been working on a side project in my spare time to fulfill a need within my team (non-engineering). All of my code was written on my personal computer either during off work hours or on the weekend for the better part of the year. Once my minimal viable product was built I presented it to my boss and leader of our team and they thought it was great, but added that I should get clearance from our in-house lawyer before we use it. In their words, I should “have it written in print something along the lines of I own the code, but our company owns the data”. Based on their suggestion, I am planning on meeting with our lawyer about the prospect of using my application, but allowing me to keep ownership of the application with the potential to roll it out to a wider audience in the future. I will also note that my application has zero relationship to what my company offers or what we would eventually offer so I don’t believe there is a conflict of interest.

Any advice on how I should phrase the conversation? Specific questions that I should ask? Legal documents that should be involved? Do you think there will be red flags that will come up during the conversation? Should I mention a potential future scenario where an additional contributor is involved from outside of the company?

[matthewking]

I would recommend avoiding signing or agreeing to anything there and then, take any documentation home and think it over for a good long while before signing. If possible, have your own legal representation go over it from your side. Their lawyer is working for the companies interests, not yours. Good luck!

[park_tech]

Thanks for the recommendation! I definitely wasn't thinking of agreeing to any terms on the spot. Do you have any idea the type of legal documents that should or will be involved in the process?

[matthewking]

I don't really have any experience with the specifics of the deal you're trying to arrange so id only be guessing, but its essentially a licensing agreement? you're licensing the company to use your software under particular terms, so perhaps research into that a little. Hope that helps.

[park_tech]

I think that is in the right direction. Thanks!

[rcavezza]

Maybe you should license it to the company. I think it would be harder for them to pull the leg out from under you if they were paying a monthly fee. Even if it was something marginal like $5 a month.

(Note: I'm not a lawyer)

Here's one thing you should keep in mind. The lawyer you are meeting with is not on your side. That person is looking out for your company's best interests - not yours. If you're serious about this, I would make sure you have your own counsel.

[uptown]

I'm wondering why you bothered to bring it to your company in the first place. I know it was built to address the specific need of your team, but it sounds like you want the freedom to sell it to a wider audience. It sounds like you protected yourself with how you developed the code, but why involve your employer now? Can you sell your product without using your current employer as customer #1? Are they going to be a paying customer?

[park_tech]

I originally looked at this as a need for our team which is why the company was involved in the first place, but as I developed the product and thought about it more, the idea evolved into seeing this as a need beyond just our company.

The reason I wanted to involve my employer now is because I want to test it in a controlled environment and see if it works/helps our team.

I'm not sure about selling the product, because my company policy claims that there can be no business ventures and freelance work conflicting or competing with their interests, which seems like standard protocol. This might technically make it a grey area, but I wouldn't assume that without legal guidance.

I have a good relationship with my company and would not make them a paying customer.