RE: Engineers as Consultants Pt. 13: How to Assign IP Ownership in a Contract

adbokat — Wed, 12 Nov 2014 17:07:56 GMT

(I am an old software developer and IP attorney, new owner of a Raspberry Pi B+ system)

It is good to recognize that different kinds if intellectual property requires different protection. Copyright protects expression, which can include code, drawings, descriptions, and other things. You don't need to get federal registration, but it offers some advantages if people steal your code. Plus, in order to give copyrights to the client, you need magic words in the contract (like, "this is a work for hire owned by"). Ideas (expressed in code or drawings) may be protected as trade secrets (if the ideas are not readily visible) and possibly patents. Definitely define what is yours and what belongs to the client -- especially who contributed what idea. Even if you give up some rights (for a proper fee), reserve the right to re-use common code and tools. Other things to consider are non-circumvention, non-solicitation of employees or customers, no reverse engineering, no re-sale, and on and on and on.

And certainly be aware of mixing open source code with what you want to keep as your own. You may inadvertently cause your code to be deemed open source, depending on the open source license being used. If that is what you want, no problem.

Sometimes standard contracts for larger companies claim more than they have a right to claim. If you can't get them to change things (like claiming your work on anything even indirectly related to particular project), it might be good to have an IP lawyer in the appropriate jurisdiction to comment on what is likely unenforceable in a contract -- just so you know.

RE: Engineers as Consultants Pt. 13: How to Assign IP Ownership in a Contract

DAB — Mon, 03 Nov 2014 20:07:36 GMT

Excellent post.

The IP issue is more important now than it has ever been.

First, make sure YOU understand the value of your contribution.

Define a clear line of what parts of your work are funded by the client and are therefore theirs to use. Make sure they understand and residual rights you plan to retain, which would inhibit them from using the IP in a production device.

Understand your clients interest in IP. I know a lot of companies that demand full ownership of everything you do for them during the duration of the contract.

Read the IP agreement very carefully, preferably with the aid of a good lawyer. Those legal clauses can strip you of your rights as soon as you sign.

Make sure you know where to fight your battles. Sometimes you need to swallow your pride and agree, but then you need to carefully document what you consider contract generated IP and what you consider reuse of your IP.

As always, only you can keep yourself from being a victim. Nobody on your clients side will make any effort to help you.

DAB