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How do you protect IP when working with contractors?

Sunnyvale, CA |

I am about to hire an IC for a web development project. If we have an agreement in which it states that all "inventions, discoveries, developments, and innovations conceived by the Contractor during this engagement relative to the duties under this Agreement shall be the exclusive property of the Company; and the Contractor hereby assigns all right, title, and interest in the same to the Company."

Is this enough to transfer all IP?

Attorney Answers 6

Posted

You have the right idea here. We typically create a broad independent contractor agreement that includes work-for-hire language as well as a default assignment in the event the WFH services are not specificly covered under US Copyright Law.

I do not want to comment on your specfic language, but I do advise that you consult a lawyer to ensure it is protecting your interests not just on this provision but throughout its entirety.

Most of us here, including myself, offer a free phone consultation and you do and will have several legal considerations to deal with as you move forward in your business.

Best regards,
Frank
Natoli-Lapin, LLC
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Posted

You would be wise to consult with a lawyer in your area as to the specific language you should use. In particular, you want to have language specific to the types of things you are interested in protecting.

Without knowing much more about your project, it is not possible to counsel you as to the language that you should try to have included in your agreement.

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Posted

The provision that you quoted has at least one deficiency: It does not assign intellectual property rights.

The post at the link below includes a much more thorough assignment provision. However, I agree with my colleagues that a lawyer should review the entire agreement, and you should not assume that whatever you learn via Avvo will be sufficient.

This information does not constitute legal advice and does not establish an attorney-client relationship.

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Posted

Hire an IP attorney. The language is critical when deal with ICs (unlike employment which is work for hire), so having well crafted language is absolute. Your language seems of only marginal effectiveness. Then you have all the other terms that are also important in an IC arrangement. Do yourself and your business a favor and hire an attorney to draft an effective agreement.

This answer is for informational purposes only and is not legal advice regarding your question and does not establish an attorney-client relationship.

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Posted

That question highlights the risk of avoiding hiring a lawyer.

No, it's not enough. It's just a start. Get a lawyer. Using snippets of legalese that you got from who knows where and that you don't understand to address unknown issues you don't understand is downright foolish.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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1 comment

Bruce E. Burdick

Bruce E. Burdick

Posted

But, congratulations for knowing that you don't know and need to ask.

Posted

As my colleagues note, you are on the right track. But the language in your question is just the tip of the iceberg. If you are are engaging in work with contractors, it is quite important that you retain counsel to draft and review the agreements. Using a form from Legal Zoom or other such assorted sources usually leads to financially disastrous mistakes. There is a reason that lawyers spend so much time in law school and in their practice studying the law of contracts----it is a highly specialized field much like dentistry or plastic surgery, and you need the benefit of the training that an experienced lawyer brings to the table.

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