Questions

If I created a product and business, and then worked for a new employer and we talk about and demo my invention, is it now my employer's IP?

I created a recipe for a specialty food product in 2010. I registered my business that would produce this specialty product in early 2014. In late 2014 I began working as the director of public relations and outreach for a business that would provide nutritional and lifestyle programs for individuals and groups. I was not pursuing my own business at this time. My former boss was not in the food business, although we had discussed a partnership. I didn't want to sign the agreement, but now he wants me to turn over my recipe. He paid for some ingredients that I used to try new ideas or provide samples to his nutrition clients, but the recipe never changed and I was always the one who produced the product because I knew it from memory. Because it was my creation to begin with. How do I proceed? Is going to court inevitable?

2answers

Several follow up questions:
1. Do you have any sort of employment agreement now?
2. Did you disclose early on that you were working on this side project?
3. What state are you in?
4. Have you taken steps to protect the proprietary info to date--such as using an NDA?
5. Does anyone else within the company know about this recipe?
6. Is the former employer in the industry to any extent? From your description it sounds like a maybe.

The goal here would be to separate the proprietary details and show that this did not fall within the realm of your employment. I don't think that your employer has enough of a leg to stand on here so even going to court would not be a sure thing for him. However there are some preventive steps you can take now based on answers to the questions above.

Let me know if you would like to chat more,
Thanks,
Madhu


Answered 4 years ago

When you registered your business in early 2014, did you also apply for a patent? (LegalZoom's information on patenting recipes: http://info.legalzoom.com/apply-patent-recipe-20489.html )

If you were able to apply for a patent that would definitely work in your favor, but for the sake of your question I'll assume there's no patent...after a few IP disputes of my own (and working with legal startups Lexicata & LawKick), I've learned that when these disputes arise, your first steps (**before saying anything**) should be to:

1) Gather together any & all proof that the intellectual property (recipe) was entirely created by you *prior* to your employment with the former boss in question; and
2) Carefully review every detail of your historical conversations & agreements with said employer.

Once that's done, if court is looking like your future then you should definitely go beyond Clarity and get an in-state attorney's option, for advice specific to your location & scenario (try asking this same question on Avvo.com), but here a few things I've found helpful consider:

- When your former boss paid for ingredients, was it with the company's funds or his own?
- Are there any IP clauses in any documents associated with your former employer? (think beyond contracts - check email signature disclaimers, anything that could be construed in way that would seem you made it the company's product)
- Did you at any point use company property and/or resources to further your product? (e.g. a company-issue laptop)
- Did you mix your business & personal email at all? (for instance did you ever handle any of the company's business from your personal email address, or forward company emails/documents/etc. to your personal email - doing so can sometimes put you at risk of having your personal email inbox subpoenaed if a court believes it's relevant).


Answered 4 years ago

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