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A Patina Nation member asks of the community:
I need to determine intellectual property rights language for my clients’ contracts. It's regarding the work I'll soon be doing for them -- and who owns what. I'm new to this. Before talking with my attorney, does anyone have insights? I'm seeking suggestions for language, best practices, your experiences, pitfalls, resources, books, or websites that could assist. Thank you, greatly.
Feel free to drop me an email as I have a Resource for you that might help you with appropriate intellectual property language in your client contracts. TomHeaton@TrueCoreAdvisors.com
This may be overkill, but it comes from a Master Services Agreement that was stress tested by several Fortune 50 companies, so I'm confident you'll be more than covered. Might save you some legal fees. Good luck
- Any ideas, concepts, know-how, or techniques developed jointly by [YOUR NAME] and the Client through Services shall be jointly owned, without accounting, and may be used by either party in any way it deems appropriate provided that the trade secret information of the other party is not disclosed to a third party.
- [YOUR NAME] and its personnel shall have the right to retain and use any multi-purpose libraries or routines, or development tools that may be provided or used in connection with the Services (collectively, the “Tools”) and any general skills, ideas, concepts, know-how and expertise that [YOUR NAME] learns, obtains, uses, develops or creates in rendering Services for Client, insofar as such skills, ideas, concepts and know-how are acquired and applied without disclosure of any trade secret information of Client.
- [YOUR NAME] hereby reserves and retains ownership of its copyrighted materials and other intellectual property created before entering into this Agreement or into a Statement of Work. With respect to such works and to the extent that they are incorporated into the Services and are not covered by a separate licensing agreement, Client shall have a nonexclusive license to use such works solely for Client’s internal purposes within Client’s organization, and Client shall make no other use of such works.
- Client’s interest in and obligations with respect to any programming, materials, or data to be obtained from third-party vendors, whether or not obtained with the assistance of [YOUR NAME], shall be determined in accordance with the agreements and policies of such third-party vendors.
- Client’s rights to any intellectual property created as a result of Services delivered pursuant to this Agreement are contingent upon Client’s full performance of its obligations hereunder, including payment for properly invoiced Services, and no right or license is granted or conveyed by [YOUR NAME] to Client except when and to the extent such obligations are performed by Client.
As a valuation analyst who have appraised 100+ IP portfolios, if this is your first rodeo, I would not recommend attempting that undertaking, at least not solo.
What you are attempting may be constured as the unintentionl practice of law. IP rights and contract language are more likely than not squarely in the legal domain.
Probably not helpful but better know now than later.
Definitely agree. As someone who has handled such situations from a number of perspectives, all but the simplest issues are highly dependent on facts. My response below is predicated on the inquiry being purely for assistance prior to going to a lawyer, in the simplest situation of a straight work-for-hire and as a starting point for discussions with your (not their) attorney.
As a general rule, the only people who benefit from cutting and pasting 'tried and trusted' language are litigators and those with the deepest pockets. There is some value in having some preliminary language for the purposes of general preliminary negotiations, but only for conceptual discussion or to help frame your thoughts for your attorney.
All contracts and agreements are read in their entirety as well, cutting and pasting is a recipe for trouble, no matter how effective standard language is for another within the context of their whole agreement(s) and positioning. I note that that given above lacks key definitions. Those may not even reside in the same document from which it was taken.
The first question to ask is always, does what one is seeking to protect have value? If it really does, do you want to cut and paste something devised by someone else out of context and rely on yours being similar enough if needed?
If you are thinking of advising your client as to what they should do, it almost certainly is the unauthorized practice of law. They must retain an attorney in such circumstances and allow you to provide input. I did not read your question that way.
It is not entirely clear what you are seeking. If it is language that will govern the rights to work that you will be doing for them in the course of your work together, then the language is typically fairly simple. The first question to ask is what rights are in question? Patent, trade secrets, copyright and so forth. Each should be addressed. There is plenty of ready language out there on the web to govern those in such a joint development project. Another question is who owns those rights, where do they reside and does the other party have the right to assign its rights to you in whole or part?
If you are contracting with an organization that holds the rights directly and not via licenses (including with an affiliate) this should be relatively simple. You can simply google something like "simple language for ownership of co-developed intellectual property rights." I would still seek a lawyer for advice relating to confirming ownership and any indemnity needs as well as to confirm applicability to your actual situation. In many cases the issue is not ownership in isolation but what that means in a commercial environment over the course of the commercial life of that product. Ideally this should be addressed too in advance.
In contrast, if what you are concerned about is who owns the underlying intellectual property assets with which you will be working and to what extent, then the question becomes one I would work through with a lawyer, not try to draft personally, even on a preliminary basis.
I hope this helps
I am an attorney and can tell you IP law is highly complex and I wouldn't even begin to attempt to give anyone one-off advice about it. As someone else said, if the liability or value associated with the issue you are concerned about is at all substantial, you should go directly to an attorney who regularly practices in this area. This is important - do not go to just any attorney with a general business law practice; go to an intellectually property attorney.
