I am a software engineer who "invented", and developed alone an integrated ERP software solution over the past 2 years. I got the idea and coded much of the software as intern at small wholesale retailer (company A) with which I had a verbal agreement that I could keep the IP rights to the code and the company would have the "shop rights" to use "a copy" of the software without restrictions.
Recently things started to take a down turn in the company A as the company grew fairly large and new head management was formed, also new partners were brought in. The original owners distanced themselves from the business, and the new group indicated that they want to claim the IP rights to my software, offering me a contract that would split the IP ownership into 50% co-ownership, completely disregarding the initial verbal agreements.
As of now there was no single written job description and agreement/contract/policy that I signed with the company A, I signed only I-9 and W-4 forms. I now have an opportunity to leave the company A and form a new business with 2 partners (Company B), obviously using the software as the primary tool. There would be no direct conflict of interest as the company A sells furniture.
My core question is: "am I better off just leaving with the software without anything signed, or should I fight the contract and resolve the issue with lawyers? (FL, US)"
- Given the situation, where no signed legal agreement is present, I created the software partially as an intern and no-contract employee, and "the invention" is not in direct conflict of interest with the company A, and I always used my personal computer/servers to code/host the files on.. What is the applicable law governing the copyright and intellectual properties of the software in such case? If nothing is signed and I leave the company A tomorrow, who by default owns the IP/copyright to the code? I am concerned only with the US law, and local state law in south Florida (District 11)
- I am familiar with the "shop rights", I don't have any problem leaving a copy of the code in the company for them to use/enhance. What worries me, Can the company A make any legal claims to the software/code/IP and potential derived profits/interests after I leave and form a company B?
- Can applying for a patent/registering the software at http://www.copyright.gov in my name prevent any legal disputes in the future? Can I uset it as evidence for legal defense? Could adding a note specifying the company A as exclusive license holder clarify the arrangements?
- If I leave and the company A sues me, what evidence would they use against me? On what basis would the sue since their business is in completely different industry than software (wholesale goods). Every single source file was created/stored on my personal computer with proper documentation including a copyright notice with my credentials (name/email/addres/phone). It's also worth noting that I develop significant part of the software prior to my involvement with the company A as student.
- If I am forced to sign a contract and the company A doesn't honor the verbal agreement, making claims towards the ownership, what can I do settle the matter legally? I like to avoid legal process altogether as my budget for court battles is extremely limited at the moment.
Few points for clarification:
- I want to clarify that there was never hidden intent on my part, I was very transparent with the company A from the beginning, both parties agreed on the arrangements several times during the 2 years
- The software was not made specifically for the company A, even though they use it for their operations. The software was designed to be as generic as possible so it can be used by other business in virtually any products/services industry, the company A was just a guinea pig as they were the first to use it, they agreed to this before the software was made
- The company was not looking for the software solution when they approached me, I basically brought my old code in, enhanced it and created my job there
- There was no management/guidance that would affect my work, I was "my own boss" with no other persons in the company involved in software in any way. There is no know-how of the company A in the software
- No specific procedure/method/secret that would be considered confidential is embed in the software, the company A owns their run-time data and has access to it (databases)
That's it. Thank you for your time reading my post, this is big deal for me personally as well as professionally. Any useful answers/thoughts/experiences are much appreciated, and for them I thank you in advance. I understand that this is not legal advice/service, I only hope to get some input.