Started a limited company under full time employment - should I disolve?

[bobbydot]

Hi,

• I work full time for a large company
• I have recently had the opportunity to do some side work (training). This is not my normal job and no clients are involved with my full time company
• In my contract, it does not say I cannot work for anyone else
• It is much easier to have a limited company (visas for travel, NDAs, and I sometimes want to subcontract another trainer)
• I started a limited company, but recently found the clause which I believe says my full time employment will own this (full text below). It says trade names and domain names would vest in them completely

What is my best course of action here? Some questions I have:

1. Does this mean they would theoretically own it as a trade name?
2. What does this really mean if my company vests in them completely?
3. Is this enforceable and should I dissolve my new company?
4. Can I work as a sole trader while the company exists?
5. Am I able to dissolve the company, then have my wife set up in her name, and hire me as an employee. Happy to have her run admin work. I would prefer to have a limited company for the reasons stated above

Clause in full:

You shall give [Company] full written details of all Inventions (as defined below) and of all works
embodying Intellectual Property Rights (as defined below) made wholly or partially by you at any time
during the course of your employment. You acknowledge that all Intellectual Property Rights subsisting
(or which may in the future subsist) in all such Inventions and works shall automatically, on creation,
vest in [Company] absolutely.
To the extent that they do not vest automatically you hold them on trust for [Company] . You agree to
promptly execute all documents and do all acts as may, in the opinion of [Company] , be necessary to
give effect to this clause.
You hereby irrevocably waive all moral rights under the Copyright, Designs and Patents Act 1988 (and
all similar rights in other jurisdictions) which you have or will have in any existing or future works referred
to above.
In this clause, the following words and phrases have the following meanings:

▪ "Intellectual Property Rights" means patents, rights to Inventions, copyright and related
rights, trademarks, trade names and domain names, rights in get-up, rights in goodwill or to sue
for passing off, rights in designs, rights in computer software, database rights, rights in
confidential information (including know-how and trade secrets) and any other intellectual
property rights, in each case whether registered or unregistered and including all applications
(or rights to apply) for, and renewals or extensions of, such rights and all similar or equivalent
rights or forms of protection which may now or in the future subsist in any part of the world.
▪ "Inventions" means inventions, ideas and improvements, whether or not patentable, and
whether or not recorded in any medium.


Thank you!

 

[japancool]

I would think it only applies to work done "in the course of your employment", i.e. on behalf of your employer. If it wasn't done for them, they can't claim to own it.

A lawyer will correct me if I'm wrong though.

 

[The Resolver]

The contract terms does not say 'In" the course of your employment but "during". They could argue, therefore, that such does not refer just to something you created as part of your work for the employer but to anything created at any time within the period of your employment whether as part of your work or not,. However such broader definition could be challenged by the employee. It depends on the nature of your employment and whether the employer could argue that this is something you would be expected to do as part of your employment. You say that training is not part of your normal job so that will help your argument. Do you work at your employer's (or employer's clients) premises or do you work ast home? Do you use any equipment of your employment? If you neither spend time on your employers/clients premises nor use any eqiupment (or IP ) of your employment when training seperately then you should have a good argument that the IPR is yours.

I would first ask yourself the question whether the name you wish to use necessarily amounts to IP. For example can you not just use yor own name for the domain and company name? They can't claim rights in your personal name. The suggestion involving your wife may be worth pursuing . But remember (sorry to say this) to have an Agreement to protect you in case family relations deteriorate. Althuogh it might be an idea for your employment contract with your wife to contain a similar IP clause! She cannot be bound by your employment contract,

You don't need to dissolve the company just change the name. I know the CH record will still contain the old name on the record but any search against your name as Director will link to the old company if you dissolve it.

If you are the sole Director and use the Model Articles unchanged, some decisions you take may be invalid. See www.Mr2percent.com - and scroll down for the STOP PRESS item.