Can I get banned from using capacitive touch technology? (intellectual property) - Page 1
Forum section: electronics / general

author: Georgy.Moshkin
author_rank: Frequent Contributor
timestamp: November 01, 2023, 12:37:51 pm
content: First of all, I must note that client have a good point that I amQuoteI haven't received any payments yet.What I don't like is this:QuoteQuoteDoes it make any sense? My argument is that with these or similar requirements I will not be able to use any technology very soon.

author: Siwastaja
author_rank: Super Contributor
timestamp: November 01, 2023, 12:51:19 pm
content: Sure that is normal. You would usually agree to not compete forsometime as the part of the deal, like 6 months, maybe a year if the deal is good otherwise.For 20 years as suggested, you just state your price for the 20-year deal of non-competition on the field, something like $20 million would sound like a reasonable starting point, depending on the actual "width" of the clause. Remember not to only think your salary, but the future prospects if you made it a successful business; long timeframes like 20 years are problematic because the cost would be prohibitively high, in fact I think $20 million would be a bargain.Remember, you can always sign a deal which limits you for a long time, butdo not sell your soul for cheap.And don't argue, for each ridiculous requirement they have you state your conditions and if they are not happy with it, then good riddance, you don't have a deal.

author: MT
author_rank: Super Contributor
timestamp: November 01, 2023, 01:42:34 pm
content: Quote from: Georgy.Moshkin on November 01, 2023, 12:37:51 pmComplete normal garbage contract! Any contract of this type shall always be scrutinized by a lawyer specialized in these types of contracts to iron out all the garbage before signing.Actually YOU should have had done a "my terms" list before doing bissniss. You really want to sell your soul for 20 years to a customer whos intention is to enslave you for nothing.

author: tggzzz
author_rank: Super Contributor
timestamp: November 01, 2023, 02:52:27 pm
content: Quote from: Georgy.Moshkin on November 01, 2023, 12:37:51 pmIn many cases the contract should also contain a clause that title only passes to the purchaser after all money has been paid to you.20 years for anything generic or common is ridiculous.

author: rstofer
author_rank: Super Contributor
timestamp: November 01, 2023, 03:58:47 pm
content: Walk away! Or run...In 4 US states (including California), non-competes are banned and unenforceable. I'm not sure how it works in Hong Kong. Ask around. I would be surprised if they last longer than a couple of years if they exist at all. Technology changes too fast!I sure wouldn't tie up my career for a one-off contract that lasts a lifetime.

author: AndyC_772
author_rank: Super Contributor
timestamp: November 01, 2023, 04:12:07 pm
content: Make sure that, in return, they're paying you a fair price each year to keep that part of the contract in effect, and that there's a break clause every so often that allows either party to walk away with no further obligation. You'll soon find out what this exclusivity is really worth to them.Also, make it very clear that "Anything part of that service becomes property of the person that is paying you" means "anythingactually delivered by you to the customeras part of the service, andpaid for in fullby said customer" becomes theirs.Don't open yourself up to claims that some thing you did, which wasn't part of that service and was never sent to the customer as one of your deliverables, is somehow no longer yours.If they won't agree to this, walk away. It's not something to negotiate over.

author: ebastler
author_rank: Super Contributor
timestamp: November 01, 2023, 04:32:37 pm
content: In your discussion with the potential client, it might help to tie this back to the actual type of "intellectual property" that could be relevant:If it iscopyrightprotection, that would refer to thespecific workyou deliver. Sure, you cannot sell the same source code or schematic to the next customer, or publish it as open source. But you can create a new work using the same underlying technology. Copyright does not protect the underlying technology in general.If, on the other hand, the client feels that you are providing apatentableidea: There should be dedicated rules in the contract to define how that is handled. Joint patent application and ownership (and sharing of costs), or do the right fall to the client? If it's the latter, there should definitely be pre-agreed royalties. Edit: And, of course, the patent will delineate clearly which specific functionality is protected.Besides that, as others said, thetermof exclusivity is an important negotiation parameter. 20 years is clearly excessive, unless tied to a patent term (and royalties!). And you could negotiate about limited exclusivity for certain industries orfields of use: "I will not sell or publish another capacitive touch design to control kitchen sinks" or such.

author: ejeffrey
author_rank: Super Contributor
timestamp: November 01, 2023, 04:46:34 pm
content: QuoteThis, and also most consulting contracts have stipulations about "pre existing IP" -- that is, if you have anything developed on your own time before the start of the contract (such as utility libraries) but that will be used in the contract and is not specific to this project, you need to make sure that either you retain ownership of your pre-existing IP (unless you are being paid to fork over total ownership). It's common to grant the other party a non-exclusive, royalty free license to pre-existing IP if it becomes part of the deliverables. Ideally, both sides should enumerate their pre-existing/background IP in the contract.Also make sure that there is consideration of 3rd party IP including open source that is part of the deliverable. You should make sure you aren't promising ownership of anything not yours to promise and that the other party acknowledges any limitations of the 3rd party IPs on their use of the final product.Definitely get a lawyer versed in local contract law and IP law to look over the terms -- these are just issues you should discuss with the lawyer. If the contract isn't worth enough to pay for a couple hours of a lawyers time to review and provide advice, then definitely don't agree to any sort of questionable IP terms, and certainly don't agree to any sort of non-compete clause much less one for 20 years. If the contract isn't worth that much but you still would like to take it, tell them: that you doubt the appropriateness and legal enforceability of some of the contract terms but that it's not enough money for you to engage legal services. Then say you want them to either pay a lot more (so you can afford a lawyer) or remove all restrictions and make it a simple work-for-hire agreement. There might be some pre-existing development consulting agreements that are common in Hong Kong, you could use one as a reference.Overall this sounds like an excessively restrictive contract written either by someone who just doesn't know what they are doing, or is really trying to take advantage of you. I would be really cautious about proceeding.

author: nctnico
author_rank: Super Contributor
timestamp: November 01, 2023, 05:01:31 pm
content: Quote from: ejeffrey on November 01, 2023, 04:46:34 pmI second this. The above is exactly how I have setup the IP rights in my terms & conditions. With the addition that copyright of customer specific code only transfers to the customer after payment in full. Until payment in full, I grant a license to test the software. This means that in case the customer goes broke, you retain rights to what you have made and whoever wants to continue with the company has to pay you before releasing a product based on your code. This has saved me quite a chunk of money already.QuoteYup. But some just try. I typically counter long term non-competes politely by requesting a compensation of 30k (or more) euro a year for not being able to operate in a certain market segment.

author: Nusa
author_rank: Super Contributor
timestamp: November 01, 2023, 06:44:52 pm
content: In any case, non-lawyer legal advice or generalizations in an international forum should always be suspect, especially if they aren't familiar with the laws of the region in question. Which would appear to be Hong Kong, if the OP's tag is correct.

author: ebastler
author_rank: Super Contributor
timestamp: November 01, 2023, 06:50:29 pm
content: Quote from: Nusa on November 01, 2023, 06:44:52 pmI think this will largely be a matter of negotiation with the client, not laws ruling one way or the other.

author: langwadt
author_rank: Super Contributor
timestamp: November 01, 2023, 07:23:20 pm
content: Quote from: nctnico on November 01, 2023, 05:01:31 pmafaiu, the employment law here for non-compete clauses is limited in time and requires compensation, up to 6 months with 40% pay, up to 12months with 60% pay

author: ebastler
author_rank: Super Contributor
timestamp: November 01, 2023, 07:28:42 pm
content: Quote from: langwadt on November 01, 2023, 07:23:20 pmSince the OP is writing about a "client", I am assuming that this is not about employment, but working as a contractor or consultant. I would be very surprised if Hong Kong law (or Danish law, for that matter) has hard-and-fast non-compete rules for those.

author: langwadt
author_rank: Super Contributor
timestamp: November 01, 2023, 07:38:11 pm
content: Quote from: ebastler on November 01, 2023, 07:28:42 pmagreed

author: ejeffrey
author_rank: Super Contributor
timestamp: November 01, 2023, 08:40:19 pm
content: Quote from: ebastler on November 01, 2023, 07:28:42 pmDefinitely check with a local employment lawyer on that as well. At least in the US, non-compete agreements with independent contractors are generally harder to enforce than for employees, and furthermore a broad non-compete agreement could actually lead (in part) to the contractor being legally reclassified as an employee. That would entitle them to benefits, paid time off, and leave the unintentional employer on the hook for considerable taxes. It's not just that, but the basic idea is that if you exert control over how a contractor runs their business rather than simply the result you want, they aren't actually independent. The department of labor has a multi-part test for misclassification of independent contractors that also considers things like whether you set your hours of work, provide your own tools and equipment, hire and pay your own support staff, and so on.

author: SiliconWizard
author_rank: Super Contributor
timestamp: November 01, 2023, 09:55:09 pm
content: Non-compete clauses for employees should always be limited in time (when the employee leaves the company) and should be compensated financially. Laws vary depending on where you are, but that's pretty much usually the common denominator.As an independent worker, you should not accept such a clause unless you have *at least* the same, a clear time limit and financial compensation (meaning that if the client wants such a clause, you *should* raise your quote accordingly.)After that, what you're willing to accept is entirely up to you, no one can decide for you.

author: Someone
author_rank: Super Contributor
timestamp: November 01, 2023, 10:34:19 pm
content: Quote from: ejeffrey on November 01, 2023, 04:46:34 pmOne entity didn't understand why I wasn't willing to sign an: exclusive, perpetual, royalty free, sublicensor/ownership, agreement that would contain all background IP explicitly described or later found.... that included zero compensation for any of the above. Pointed out that would need someconsideration, they said it wasn't in their interests to agree to any compensation terms and that they would not accept all of the above minus the exclusivity (they could have had it all for free!). I politely refused the contract.Funny how employers want you for your experience and knowledge gained at previous employers, but don't want you to then be able to use experience and knowledge you gain while working for them.

author: Georgy.Moshkin
author_rank: Frequent Contributor
timestamp: November 02, 2023, 12:38:19 am
content: Thanks! Much more answers than I expected. I have a company in HK, client is from US and I am trying to find more clients through freelance platforms. Part of funds from freelancing will go through HK company to pay fulfillment services for my own stuff. Basically it is only me, and company is a way for making business. Answers are really helpful for making my further decisions. The project is <$1000, but answers related to larger amounts are very important for me too

author: jonpaul
author_rank: Super Contributor
timestamp: November 02, 2023, 06:31:19 am
content: Bonjour just seen this now. Capacitive touch is a very old and well dosumented technology. There are thousands of patents. Just search.As designerinventor and consultant since 1975, we encountered these customer contract issues many times.To clear some confusion of several different issues mentioned;0/ Every agreement provision is negotiable BEFORE sign off. The consultant can present a terms or General Proposal Provisions to guide the customer and negotiations. We suceede to get the contracts changed esp for these and liability provisions, even for huge firms like General electric, THX, Dolby, Cooper, Boeing.1/ In USA a standard employment agreement or contractors engagement uses the "work for hire" rule:any work that genrates a gesign, invention, proto, discoverry etc becomes property of the employer. Consult the laws and cases in your country and juristriction. In places like USA the local states law must also be considered.2/ A non compete clause MAY be disallowed in some areas and may be restricted but is still common legal boilerplate.3/ A US Patent was limited to 17 years duration after grant. Revised/harmonized US patent law is now 20 years after grant.After a patent expires it becomes public knowledge.4/ You cannot be restrained from future work in your field of expertise by a consulting or regular job.5/ You CAN be restrained from revealing confidential, trade secret, patent pendong, and other proprietary information during and after a job is finished.THIS IS NOT LEGAL ADVICE. JUST MY EXPERIENCE. CONSULT A LEGAL COUNCIL BEFORE ANY AGREEMENT OR CONTRACT IS CONSUMATED.Bon Chance,Jon

author: Haenk
author_rank: Super Contributor
timestamp: November 02, 2023, 12:07:06 pm
content: If this is a sub-1k contract, they will likely have a hard time finding another contractor working for this little money.So essentially I would offer them: "I'll deliver a working and compliant design for said amount x. No further legal terms are accepted."I'm pretty sure they will accept anyway.

author: nctnico
author_rank: Super Contributor
timestamp: November 02, 2023, 12:15:41 pm
content: Quote from: Haenk on November 02, 2023, 12:07:06 pmSorry, but you don't want to leave things 'hanging' where they are free for any interpretation. There are evil people around looking for contractors they can suck dry through frivolous lawsuits. I once had cake because a guy like that died in a car crash and the person he sued was so happy everybody at work deserved cake.As others wrote: Good legal advice from a lawyer will pay for itself somewhere down the line.

author: rstofer
author_rank: Super Contributor
timestamp: November 02, 2023, 05:08:10 pm
content: Quote from: Georgy.Moshkin on November 02, 2023, 12:38:19 amI wouldn't get out of bed for less than $100/hour - maybe that's why I have been comfortably retired for nearly 20 years... $1,000 is a good day's work but that's all it is, a good day's work. I don't see how you could even settle on the design in a day! Meetings, including Zoom, are time sinks. Do a realistic time estimate (including meetings and phone calls) and price accordingly with no conditions.Walk away! If you must take the job, accept no conditions other than to deliver a working project by an agreed date for an agreed amount - cash on delivery. No restrictions! That little bit of money just isn't worth the aggravation.

author: ejeffrey
author_rank: Super Contributor
timestamp: November 02, 2023, 05:38:38 pm
content: So international contract and IP law are... complex. It's hard to know even what laws will apply for sure. At the same time, enforcement is difficult and expensive. It's not going to be easy for your American client to bring suit against you for violating the terms, but also it's going to be easy for you to collect if your client doesn't pay because of a dispute. So it can be hard to low dollar value international contracts where you both make money and are adequately legally protected. That's just a fact of life for international business.Also, I really don't know how much legal advice costs in Hong Kong, but for < $1000 I don't think this is a situation where you will be able to have your own lawyer redline the contract and send it back, then expect them to come back with a revised document and so on. So I wouldn't go to a lawyer yet. Remember: a lawyer is going to help you understand legal jargon, know what contract terms might be difficult to enforce, and what implicit terms you might be agreeing to without noticing (things like: are you providing an implicit warranty that could leave you on the hook for a lot more development?) But if the plain terms of the contract are not something you want to agree to, no need to involve a lawyer at all. It's your call, but for $1000 I wouldn't consider any sort of long-term restriction or anything that would cause me to turn down other work at all. I'd tell them you think these terms are unreasonable, and to come back with something that is a lot more scoped to "I do the thing, you pay the money" If they say no, just walk away. If they say yes, take that document to a lawyer to get advice.If you are going to be doing lots of small jobs like that, ideally what you would do is get a contract template that works for you, get vetted by a lawyer, and insist that clients take it or leave it. That's the most efficient way to do it. But if your clients are big companies, they are going to have a hard time accepting that. They are going to want you to start with their contract and negotiate from there. In that case, consider just adding a zero to your rates to cover the extra costs.The good thing about doing small jobs for a big company is that once you have worked with their legal team and gotten mutually agreeable contract terms, you may have a good in for future work, due to the difficulty and expense of getting new contractors "in the system". But don't underbid a contract expecting future work from the same client, make sure the first contract is going to cover your expenses, including any one-time expenses such as legal fees.

author: Siwastaja
author_rank: Super Contributor
timestamp: November 02, 2023, 06:40:22 pm
content: Quote from: Georgy.Moshkin on November 02, 2023, 12:38:19 amYou can probably take the "in the USA I make $x per hour" type of comments with grain of salt because the level of price for expert work is significantly lower elsewhere - but still, even taking that into account, $1000 project sounds like there is not much room for special conditions regarding IPR let alone competition limitations. For a $1000 project, all the client should get is the right to use the deliverables, but pretty much nothing else. It's such small sum you should probably keep all the rights to re-sell if not the whole project at least parts of its as components to other customers, and get paid better for your work that way, and your client should really accept this. Mandatory car analogy: if you pay for a bus ticket, then you ride with other customers and get lower quality service. If you want your own private ride, you pay for a car.

author: rstofer
author_rank: Super Contributor
timestamp: November 02, 2023, 07:08:55 pm
content: Make sure there is no 'loss of income' clause where they sue you for non-delivery in an amount equivalent to their projected sales. 'Best effort' is the only guarantee you should offer. Many times the customer redefines some aspect but fails to change the due date.Document everything, especially design meetings. Circulate your notes and get approval at the next meeting. Document everything! The technology is easy, it's the people who screw things up.Infineon has an entire product line with touch sensing. They should hold you harmless from patent problems. Plus they have example code.https://www.infineon.com/dgdl/Infineon-AN85951_-_PSoC_4_and_PSoC_6_MCU_CapSense_Design_Guide-ApplicationNotes-v70_00-EN.pdf?fileId=8ac78c8c7cdc391c017d0723535d4661

author: boB
author_rank: Frequent Contributor
timestamp: November 02, 2023, 07:28:57 pm
content: I remember P-SoC (Cypress ?) pushing their capacitive touch controllers. Wasn't that 20+ years ago ?CT must be over 20 years old now ? Prior art I would say but if you have to go to court, at least here in the US, it can cost a LOT.I can't stand patent trolls !boB

author: ebastler
author_rank: Super Contributor
timestamp: November 02, 2023, 07:41:30 pm
content: Quote from: boB on November 02, 2023, 07:28:57 pmYou are way off topic. This thread is not about enforcing patents, but about a customer asking for exclusivity for development work to be done. (Over unreasonably long time, in unlimited fields of use.) It is advisable to read the posts, not just the thread title.

author: rstofer
author_rank: Super Contributor
timestamp: November 03, 2023, 02:07:54 am
content: When you figure your hourly rate you need to include the 'burden' which, around here runs about 35%. This covers vacation, holidays, medical and dental insurance and all the other company provided benefits. In US don't forget you pay both sides of Social Security - 12.4%. Suddenly that 35% number isn't all that outrageous.In California the median salary non-computer EE (whatever that is) is $138,610 to which we need to add the 35% burden which totals to $187,124 or around $90 per hour. Call it $100 and it all works out. The salary is for California, if you drill down, I suspect it is higher in Silicon Gulch (around $160,0000). bls.gov is a fun place to visit.https://www.bls.gov/oes/current/oes172072.htm#st

author: Georgy.Moshkin
author_rank: Frequent Contributor
timestamp: November 03, 2023, 02:21:24 am
content: Quote from: rstofer on November 02, 2023, 05:08:10 pmJob is cancelled by the client. I've spent around a week on this, but do not want to open any dispute this time. I guess I could have open something like $10 dispute and end up with an angry client and "become liable". Client says that I have not stolen anything yet, but "time will tell". I think that client is sincerely believes it and seeing everything through the prism of IP law. Or it's just some kind of prank.

author: ejeffrey
author_rank: Super Contributor
timestamp: November 03, 2023, 03:23:08 am
content: Quote from: Georgy.Moshkin on November 03, 2023, 02:21:24 amTbh this sounds like a free energy crank or similar.In any case they are completely clueless. I'd walk away and avoid any future communication and be glad you didn't waste more time.

author: boB
author_rank: Frequent Contributor
timestamp: November 06, 2023, 07:51:41 pm
content: ebastler said:"You are way off topic. This thread is not about enforcing patents, but about a customer asking for exclusivity for development work to be done. (Over unreasonably long time, in unlimited fields of use.) It is advisable to read the posts, not just the thread title."Nope. IP law has been mentioned a few times so I am on topic at least partly here.I have had plenty of patent and IP situations come up in my electronics profession.boB