Q: I’m a pediatrician and my wife is a software designer. We were talking about combining these to design games for kids with serious illnesses to help them understand their care. The problem is that I’m currently at a university hospital that is very proprietary about research and my contract says that the hospital would have a claim on what I develop that is in its “area of interest”. That is really vague but if it applies then I would wait until I move to another job, which I am planning to do, to work on the games. If I do that, can I limit this type of issue in a new contract?
Dr. Medlaw: That vagueness is very deliberate. It can cover the entire scope of what the hospital does and even what the hospital is just thinking about doing even though you would not know about such plans.
You would need a clear exception carved out now, perhaps based on your guarantee to place the hospital’s name favorably in any promotional work. Frankly, though, since you would hope to market your games to a company or to investors, you are really best off by avoiding any overlap with the hospital that could impede that process by making them the 500-lb gorilla in your contract negotiations, so waiting is the best idea.
When the time comes to work with a new contract you should, of course, seek the advice of an attorney who is expert in intellectual property.
However, there are some general approaches that you will want to consider.
The contract should state that it would only apply to what the employer is working on that you have what the law calls “actual knowledge” of, which means that you personally know about it already.
You would also want to include that this would have to be specific, like a particular mode of care, so the hospital cannot just assert that anything that overlaps with treating kids that you know about would belong to them.
Then, to avoid the real problem in your current contract, which can reach into your home for what you work on in your off-hours, you would want the new contract to be limited to intellectual property that you develop during work hours as part of your employment. If the hospital will not agree to that then a limitation to what you create using the hospital’s facilities and any information that is proprietary to it would also be an option because you will not be using those in this project and so you will be covered against a claim on your outside work.
