Conflicting Invention/Non-Compete Agreements

by Apurvaa 2013-07-22
To all:

I left my previous employer who has a non-compete/legal contract in the State of Oklahoma (by law all non-competes are void (Oklahoma title 15 section 219a) , as is blue-pencil from my research yesterday.

An invention statement reads:

"In the event that employee, either alone or in conjunction with others, makes or conceives any invention while employed by xxxxx, or within six months after the termination of employement with xxxxx, if such invention results from or is suggested by such employment, employee will promptly disclose such invention to xxxxx and will refrain from disclosing it to any other person, except as may be required by law. Each such invention shall be the sole and exclusive property of, and will be assigned to, xxxxx... As used in this agreement, the term "Invention" means any improvement, discovery, idea, or invention, relating to the business of xxxxx, whether or not patentable, whether or not made or conceived at the request of xxxxx, whether or not made or conceived during usual hours of work or in or about the premises of xxxxx, and whether made or conceived prior to or subsequent to the execution of this agreement."

So, 6 months after I leave, everything still belongs to them, in summary. Whether its lawn mower design, toothbrush design, furniture design, software design, etc.... I leave this employer and go to a competitor, and sign an invention statement at this company which reads:

"Employee agrees that, with respect to any and all discoveries, improvements, and inventions which employee may conceive or make during the term of employee's employment either solely or jointly with others, employee will assign and by these presents does hereby assign and transfer all of employee's entire right, title and interest in and to such discoveries, improvements, and inventions to employer, its successors and assigns, except those inventions specifically excluded by statute as more fully explained in section (B):

B) employer provides employee notice that individual states have enacted and will likely, in the future, enact or modify statues relating to ownership and assignment of inventions developed by employee and such statues contain or will contain specifically worded notices. Such statutes and the notices provided therein are incorporated herein by reference and make a part of this agreement..."

It then talks about California, which is of no concern to me.

So, at the end of the day, am I supposed to honor both? Because of a blue pencil and the outrageous claims of the first invention/non-compete, am I free with ideas, especially after I leave employment with them?

Would like all thoughts and perspectives.
Re:Conflicting Invention/Non-Compete Agreements
by Dougiezerts
These agreements are not non-competes - they're intellectual property agreements so I expect any statutes or case law you've come across regarding non-competes are irrelevant.

I expect what Employer A doesn't want to have happen is for you to come up with a great idea while in their employ and take it to a competitor or develop it on your own. If you switch jobs to another employer in the same or in an aligned industry, then I'd definitely have an attorney take a look at both documents and get an expert legal opinion. The question I'd particularly have (which I can't answer for you) is whether employer A has the legal right to any inventions you come up with within six months AFTER your departure. That sure seems to be a substantial reach (but I'd guess employer A would only consider taking legal action if it adversely effected their business.)
Re:Conflicting Invention/Non-Compete Agreements
by Kawthar
You need to see an attorney for an expert opinion on the relevant case law and whether an intellectual property agreement is affected by that statute, if at all. Non-competes and intellectual property agreements really are two different things.
Re:Conflicting Invention/Non-Compete Agreements
by Evelyn321p
Sure. The non-compete part is already solved due to state statutes and laws. These are definitely IP or Patent/Invention related agreements.

I find the 6 months a reach as well. If this is a stretch, and the courts say so, would this be eliminated entirely due to blue-pencil laws in Oklahoma? Essentially, the 6 months invention clause tells me I'm not allowed to have any ideas for 6 months.
Re:Conflicting Invention/Non-Compete Agreements
by Jstoll1
Oklahoma title 15 section 219a:

§15-219A. Noncompetition agreements.
A. A person who makes an agreement with an employer, whether in writing or verbally, not to compete with the employer after the employment relationship has been terminated, shall be permitted to engage in the same business as that conducted by the former employer or in a similar business as that conducted by the former employer as long as the former employee does not directly solicit the sale of goods, services or a combination of goods and services from the established customers of the former employer.
B. Any provision in a contract between an employer and an employee in conflict with the provisions of this section shall be void and unenforceable.
Added by Laws 2001, c. 406, § 4, emerg. eff. June 4, 2001.
Re:Conflicting Invention/Non-Compete Agreements
by Lmystbooks
Absolutely. I'm aware that it is NOT affected by the statute. Thats why were not talking about the non-compete agreement.

I'm looking for input/advice on having two agreements with two different companies saying I will give them all ideas at hand! Is this legal or possible?

Re:Conflicting Invention/Non-Compete Agreements
by Tmaccoux
Mr. Knowitall (I like the name!)

I did meet with HR and Legal for my current employer and their experience tells us that the previous employers document is next to impossible to enforce, so they have no concerns, and say I shouldn't. I know I'm personally liable for all of this as I'm infringing, as would my current employer.
Re:Conflicting Invention/Non-Compete Agreements
by Tierst
Should we infer that you've informed your new employer of the provision and gave them a copy of the contract, and that after consultation with their lawyers they're satisfied that it won't be an issue?
Re:Conflicting Invention/Non-Compete Agreements
by Workaholic
Beth3 summed things up nicely. I suspect the invention would have to be of considerable value for the former employer to try to pursue anything under this language, and that in relation to ideas conceived after you end your employment its breadth would make it very difficult to enforce.
Re:Conflicting Invention/Non-Compete Agreements
by jenniwhittaker
I appreciate the input people. Is there a way to delete this thread?
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