Intellectual Property laws seem to be a bit of a minefield so your views would be helpfull. If I agree to create drawings to produce an article to fullfill my clients requirements per an SOW, does that give my client the right to claim IP on my research results, stress calcs etc that I generated in the process of creating the drawings? The only deliverable agreed to was the drawing package. In my mind the act of creating the drawings is my knowledge and how I do business.
If you buy a car from the dealership you don't have any rights to the engineering processes that created the car.
Your thoughts?
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What the client owns is whatever you give them, per contract. Written contracts are a good idea. If you are an employee then there are usually contractual rights of assignment to the employer.
I am not a lawyer and not giving legal advice. If you want an affordable lawyer for this kind of stuff you can look into PrePaid Legal or something similar. But,
They get what they paid for. If the SOW said drawings and there is no NDA or other agreement then I would say they don't get the work, just the drawings.
On the other hand, if you billed them for the time to generate the calcs, etc. then they probably do have some right to the work. On the other hand if the calcs were something you already had in place like a spreadsheet or notes taken on your nickle then maybe they don't have a right to it.
Of course you want them to come back. So you might ask them to pay you something additional to document your calcs. If they have to show the safety of whatever you designed for them they probably should have asked for the calcs and also given guidance on what standards to use.
Agreements, shmeements, the problem is anyone can sue for whatever they think they want to cheat someone out of, and unfortunately, there are too many of those guys out there. Don't skimp on professional advice on what I am going to note.
Thus without any explicit agreement regarding "inventions", "patent applications", "trade secrets", "intellectual property" & the maintenance & defense of same, all of those items are left to argue about.
Having it known up front in an agreement is the only way to define it carefully such that those rights not only exist for the designer, the buyer of services or both, but that you in effect can retain any rights at all. If you develop something and intend to keep it a trade secret (which is often very valuable) then both parties have to agree to not release information to any other person without approval and to keep the technology a secret. If you have to release information (like to a contractor), then they will have to sign a Non-Disclosure & Confidentiality Agreement.
In the case of patents, releasing the information publicly before you file a formal application disallows you from being able to file foreign patents. Inventing something and then not applying for a patent within 12 months also disallows you from being able to file a US patent. Failing to document the invention process in a signed and dated sewn ledger book with confirmation signatures of witnesses can also leave you unable to prove how & when your invention took place if there is invention of the same thing by two people about the same time. Thus all these sorts of things should be spelled out in the contract.
I would think you would need a patent attorney to construct a standard development & design contract where you agree to assign any inventions to the buyer of your work (as is common), and also a similar contract where you retain or share the patent rights. It can get sticky in specifics. If you retain patent ownership, and "license" your customer either for free or paying you a royalty, then you have to decide who defends the patent as required, & to what extent does someone defend (very expensive), and what happens if they do not do so, and your patent "goes away", or do you merely license an infringer (very good sometimes).
My real world suggestion is to head to Barnes & Noble and start reading patent books by Nolo Press & similar books. It does have standard forms inside the book as an example of some things you might use.
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I do NOT recommend trying to write patent applications, even if you are very sharp, as the language which determines whether you are claiming or describing something broadly or narrowly can make the difference between a good and bad patent, and after lots of patents, I still can't figure this out. The logic of how & why claims are written they way they are also still escapes me, as it is arcane and set by USPTO rules, which requires basically becoming a patent attorney.
Been doing some digging around on some legal sites. It would appear that if you are paid to develope a product for someone and the only agreed deliverable is the product then the work you performed to develope that product is your IP. It is your knowledge. You can also claim that the methods you used are trade secrets. Even though the client paid for your time used in the developement he has no claim unless explicit in the contract. This is to prevent your knowledge becoming public, after all, your knowledge is what gets you paid. There are of course advantages to this in so far as your client may not be able to approach another engineering company to modify or redevelope the product if your knowledge is critical to the product.
You can buy a book, lend it, sell it or throw it away. You cannot copy it or use its contents without the authors permission.
From all that I have seen it is "buyer beware" when it comes to IP.
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It is easy for other issues to come to the forefront. Lots and lots of issues. Your judgement needs to take over on a job by job basis and decide where you go in time and expense, contracts and patent expenses because they can get out of hand.
CompanyA hires an outside designer and their crew explains their current Zinger, but they want a ZapZinger and give their ideas in a design session with you and you set to work.
If a patent is applied for, then everyone involved in the creation of the patent pending features in the design process has a right to have his name on the patent as an owner (and he can appeal to the USPTO to put his name on it showing his proof of involvement). 3 guys from CompanyA explained what the Zinger was and how the ZapZinger could work with new features, and they wind up an equal owner of the patent, by virtue of their names on the application, and their company policy often requires them to turn over patent applications to CompanyA.
But where do you fit in? Who pays for the patent application? Who decides what actions are taken with the patent office to get it to issue? All but one of my patents were rejected initially, and CompanyA could just accept the rejection, but you might feel the objection could be overcome and you could prevail and get the patent to issue. Are you going to spend your money? If CompanyA wants to "fold", will they assign all their interest in the patent to you if you pay for the appeal/rejection/appeal process with the USPTO? Will CompanyA get a free license for turning over the assignment to you? What if you want an international PCT application within the limited time period (way before the US patent may even be reviewed), but CompanyA doesn't want the expense.
Trade secret stuff is equally important, as CompanyA would need to know and have a right to practice any trade secrets needed to make the ZapZinger, so they are paying to receive more than drawings if secret materials, processes or methods are used. Can you use the trade secret in later designs for other customers? Use & users should be defined in an agreement. Used is a funny word in itself, but CompanyA is not going to pay for what they can't use, in more ways than one.
Just because you design what you think is a unique product for CompanyA to use, CompanyA does not have a right to use it, if it violates someone else's patent. If that happens, CompanyA may be very unhappy to get a call from a patent lawyer asking them to "Cease & Desist" or face an infringement suit. CompanyA might ask for their money back from you or worse, claims you copied another persons patented features to get your fee (bad). Having a clause saying that who will do patent searches may make sense. Someone has to take charge. Just words, right? No. You design a new housing for a retail product, and that is routine. But what if a Design Patent was made by a firm, and your design just happens to nearly match the other product's shape?
If you were to show prior art and make a good faith analysis and disclose all the prior art and state your belief that the ZapZinger does not infringe any known prior art, and that as such you are not responsible for any unknown patent infringement. You then have done due diligence, that though it is limited, showing you were responsible in trying to make sure there was no conflict. No patent search can guarantee their is no infringement, since there is no such thing as a definitive search which results in "proof".
I'm obviously playing the devils advocate, but you can see what happens when nothing is described in an agreement and where everything is left for an aggressive CompanyA to work with.
If you have a terrific idea, and you've become familiar with prior art patents, and believe you have something valuable, cheap is not the way to go.
My patent attorney simply does not recommend anyone use the registered letter routine. It is far more valuable to have a description and sketch which is signed by a 3rd party who understands the concept where you & he sign and date the paper, and if you want additional protection, you get a notary to sign, stamp and date it, so no one can say that you and your witness colluded in creating a date.
This amounts to a page out of an invention/patent journal book. Since inventions move along in days, step by step, I would recommend you get one of those inexpensive books and simply record the steps and have a witness sign and date each page. By the time you refine the concept over many pages, there will be additional items and features in the design, and the whole process will be documented which will cumulatively become a history of the invention process, which is far more valuable as proof of invention.
It is less expensive overall, to record your invention development day by day in a bound book with signatures and dates than it is to keep mailing each day's work to yourself, and it is also more cohesive in a bound book, which demonstrates the progression of the concepts, which individual letters do not show, since some letters could be conveniently "lost" if you wish.
We buy books for $30-50 each to help us learn SolidWorks and other software, and it costs less than that to protect invention concepts in a bound ledger book.
Cliff, your advice is that which involves recommendations on legal issues & which is contradicted by your comment "I'm not pretending to be a lawyer.", which is further evidence you don't know what you are saying yourself.
You are merely illustrating that you are talking of something which you have not studied from current books written by patent lawyers, and that you obviously have not spent time with a patent attorney to learn what is real today with the new USPTO & PCT rules.
Your comments are without basis in current facts from my reading and my current work with patent attorneys.
If you have some potentially or actually valuable inventive structure to protect, you don't ask Joe Schmo just to save the price of a book and an hour's initial time with a patent attorney. All I've done is repeat what attorney's have said, & I've never said I am an attorney.
From the beginning I've said you have to get an attorney because patent law is obscure, uses different meaning for words, and the very written description you make of an invention can cause it to be worthless, if you use the wrong words.
Cliff you spend too much time writing about things which make you look silly.
I have taken some advice on the IP issue. I am not talking about a patent but copyright on drawings, technical documents and spreadsheets etc created in the course of a design project. The Copyright Acts that apply to N America were designed primarily to cover the arts, ie music, photography, drama, books etc and it is very explicit in stating that unless a Work For Hire contract exists between the parties then the author owns copyright.
Technical drawings, reports and calculations used for design substantiation etc which I am sure covers most people in this group will remain the copyright of the creator even if the creator is paid by a third party to perform these duties. Should the third party paying for the work wish to have copyright on all work created there MUST be an Assignment of IP contract signed by both parties agreeing to this.
In the absence of this contract it is deemed that the author has licensed the IP to the third party.
This may not be important for most people but as here in Canada, there are tax refunds and credits to companies developing NEW IP. In the absence of a signed Assignment of Copyright contract it will be the author who gets these not the person paying for the work to be performed. These can be some big numbers.
So, if you are using third party contractors ensure you have this contract in place, if you are the third party contractor it probably pays not to bring this to your clients attention!
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Already stated in a generic way: Without professional advice, what you reveal in a sealed letter, about your "invention" could have you making claims that put in or leave out critical information that may result in you getting fewer or no meaningful claims or no patent at all. The art of getting patents issued is too critical to leave to someone who doesn't work in that field every day.
I hold nearly 20 utility patents, and I would never take a significant concept that I thought was patentable and describe it to anyone other than my patent attorney.
I too am not a patent attorney! However, when I quote a project I included a cost structure for the client to purchase all engineering and related data. If they agree to purchase the full package, great. If they don't and come back whining they didn't get something, I show them the quote and tell them when I get a check they get the package. As long as the quote, SOW, ECO's and receipts all match and communication is in good faith a reliable client will work with you.
Make sure the engineering status is stated in your quote and that their PO references that quote number. If you invoice for and deliver a drawing package, then at the first mention of the models and analysis send an ECO with descriptions, associated costs, an invoice and delivery method for the data on receipt of payment. Just my humble opinion, it works for me.
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