Intellectual Property for a project/schematic - Page 1
Forum section: electronics / projects

author: ricko_uk
author_rank: Super Contributor
timestamp: September 28, 2020, 01:45:27 pm
content: Hi,when you make a schematic and PCB layout:1) what can be IP protected?2) what can be transferred to the client?Thank you

author: AndyC_772
author_rank: Super Contributor
timestamp: September 28, 2020, 01:53:15 pm
content: In very simple terms:1) Everything that's your new, original, creative work.2) Whatever they're prepared to pay for, that doesn't compromise your ability to do other work for other clients if you sign it over.

author: ejeffrey
author_rank: Super Contributor
timestamp: September 28, 2020, 02:07:55 pm
content: The schematic drawing and the layout can be copyrighted. The circuit design itself cannot be copyrighted but might be patentable if it is sufficiently novel. However that is quite expensive. It's more likely that an entire device of which the circuit is a part would be patented. Software / firmware can be copyrighted and possibly patented.Any and all IP can be transferred to the client depending on your contract. If your contract is insufficiently clear there may be specific rights that are automatically transfered.

author: Benta
author_rank: Super Contributor
timestamp: September 28, 2020, 04:37:55 pm
content: @ricky:Don't bother. "Protecting your IP" is much more expensive than what you'll ever make from the circuit.Yes, the schematic and PCB artwork can be copyrighted, but only as your implementation.If someone copies the circuit/PCB by hand to a new artwork the copyright is gone.And no, software can't be patented, at least not in the EU.

author: bdunham7
author_rank: Super Contributor
timestamp: September 28, 2020, 05:14:37 pm
content: I see you have a few opinions here that aren't too bad, but as an actual US (not UK) IP lawyer, I'll give you the free version of my official, professional opinion, which is..."It depends".These types of questionsalwayshave unstated specifics which complicate issues. So I'd start with figuring out what jurisdictions you want the protection and possible transfer to apply to and exactly what rights your client wants. Two things to watch for are that you shouldn't give your client anything that they don't ask for and pay for, the other is you must be careful that you don't contractually purport to give them more than you actually have, since you may then incur an obligation to defend or indemnify in some future conflict.FWIW, it is pretty rare for someone in what I'm guessing is your position (which I don't really know, so keep that in mind) to actually need to worry about IP at all. It is just too expensive to do it right and not effective to do a minimal job on the cheap. The only exception (in the US, no idea elsewhere) is trademarking, where is relatively painless and cheap to get the actual mark in most cases.

author: AndyC_772
author_rank: Super Contributor
timestamp: September 28, 2020, 05:35:13 pm
content: It's still worth being very clear with your client as to who owns what, even if you've no intention of taking action against anyone, especially if you have multiple clients.Over time you'll inevitably start to build up your own library of stuff - schematic symbols, common circuit elements, software functions and so on.You certainly don't want to waste time re-writing these, bugs and all, for each client. Even more so, though, you don't want any one client claiming that they now own material which you've used in multiple clients' work.Be aware that there are people out there who will assume they own everything you supply to them - even though neither the law nor any contract grants them such ownership. In the worst cases, there are even people who assume or insist they own everything you do (for anyone!) whilst you're engaged on a contract with them.

author: Benta
author_rank: Super Contributor
timestamp: September 28, 2020, 06:18:38 pm
content: Quote from: AndyC_772 on September 28, 2020, 05:35:13 pmExactly!Clear contract conditions up front are much more important than playing whack-a-mole afterwards. And much cheaper.You can even set your prices based on this. "I keep the the design rights" is cheaper than the client owns everything afterwards.

author: ricko_uk
author_rank: Super Contributor
timestamp: September 28, 2020, 07:48:05 pm
content: Thank you all for your feedback!bdunham7,I am drafting a contract (the company is UK but operate worldwide) and they agreed to pay for the IP.Two questions:1) could you please elaborate on your comment "...since you may then incur an obligation to defend or indemnify in some future conflict"2) how do I protect myself from that happening? Are there some standard wordings/clauses I should use/include in the contract?Thank you

author: bdunham7
author_rank: Super Contributor
timestamp: September 28, 2020, 08:43:12 pm
content: Quote from: ricko_uk on September 28, 2020, 07:48:05 pmI'm not going to provide anything remotely close to legal advice on an internet forum, especially regarding a foreign jurisdiction. Anything I say is just to get you to think about issues and explore them further. There are also going to be issues I haven't mentioned. I have to advise you that drafting your own contract regarding worldwide IP is not a great idea if you expect it to have any enforceability. If the whole deal isn't worth consulting legal counsel, then you have to accept the fact that you are exposedin ways that you cannot anticipate. For some types of deals, that's OK--the actual risk is miniscule. That's not a decision I can advise you on.What I meant by my comment was that if you 'sell' something to someone, if in the future a third party claims that something as their own, both they and your buyer may have a claim against you. For example, if a third party sues your buyer for infringement, claiming that their patent reads what on you sold to your client, you will likely hear about it. And that's just one possibility. How these play out nobody knows, except that it takes years and costs money.As for standard clauses and wording, I won't touch that with a barge pole. I probably wouldn't want to deal with it even in my home jurisdiction as it isn't exactly what I do and so I'm not necessarily up on every recent decision and change. Every time somone loses a case, the 'standard wording' changes! A competent and experienced IP solicitor in your country may well have an established standard method of doing such contracts and it may not be as horrendously expensive as you probably imagine. Make some inquiries.

author: Someone
author_rank: Super Contributor
timestamp: September 28, 2020, 10:18:18 pm
content: Quote from: ricko_uk on September 28, 2020, 07:48:05 pmThis gets into the very specific wording they used, you may have misinterpreted what they actually want. Many lawyers refrain from speaking in terms other than lawyer speak. Common contract "concepts" are roughly (in order of handoff to the client), a client:takes finished units with some documentationis given enough information to repair/fix itowns the manufacturing information so they can find/organise their own manufacturer (test plans etc)has the design documented so they can modify or improve it in futureowns exclusive rights to the finished designIts that last one where you can't reuse or share the design with other clients, the client takes ownership of the IP. But they may be talking about something entirely different and want you to provide some protection over novel concepts that may arise (particularly from information they give you). Hire a lawyer whenever you are unsure, and if that isn't in the budget then its not a contract to get into as mentioned above you might end up being on the hook for more than you bargained for.

author: electrolust
author_rank: Unknown
timestamp: September 28, 2020, 10:20:22 pm
content: Quote from: Benta on September 28, 2020, 04:37:55 pmfor now. just last week this wound its way through the German Parliament.@ricko_uk this is the absolute worst, possibly harmful, possibly disastrously costly, way to get advice. hire an attorney. for an hour of time you'll get the answers you need.

author: Benta
author_rank: Super Contributor
timestamp: September 28, 2020, 11:01:11 pm
content: Quote from: electrolust on September 28, 2020, 10:20:22 pm

author: ricko_uk
author_rank: Super Contributor
timestamp: September 28, 2020, 11:09:28 pm
content: thank you all,bdunham7, I totally understand this is a forum and furthermore a electronics/technical one not a legal one. I was not asking for official advice or any other advice which might give anybody here any responsibility even remotely.I was just asking for some pointers such as names/types of clauses and content I can further research to so I know what to insert in my draft. So I have a basic framework covering relevant points that I can then take to a IP legal expert for him to draft it fully, making sure he covers all my points as well as adds all his own.Thank you all again!!

author: Haenk
author_rank: Super Contributor
timestamp: September 29, 2020, 07:41:40 am
content: I don't think you are going to receive a patent on your circuit - unless it's some genius work which provides a whole new level of EE insight. UnlikelyAs already mentioned, it might be possible to register your design, however I would assume that a circuit design follows necessary requirements of traces etc., that might be fought in EU. Rerouting will circumvent this anyway.However plenty of companies had this problem for decades - the solution is to either use custom components (a PIC or ATMEL, as a kind of software dongle) or to cover your traces - by "unmarking" ICs. This might highten the bar to reverse engineer your circuit, maybe enough to hold back copycats.(not a lawyer blah blah - just my 2 cents)

author: AndyC_772
author_rank: Super Contributor
timestamp: September 29, 2020, 09:20:53 am
content: Do bear in mind that there are several different potential losses which you might wish to consider. They don't all require carefully drafted legal contracts.One possibility is that people will steal your design and copy it. If you're paid to do a design for a customer then the impact on you is indirect; yes, it's bad for your customer, but you've already been paid for the job. Implement technical anti-copying measures in your next project, if your customer requires it as part of the spec. Techniques like scratching the numbers off ICs are a bit of a joke... don't bother.Another is that you are accused of patent infringement, or some other IP-related offence. This is a risk we all take to some extent when we design things. Seek qualified legal advice on this.The issue I've come across most regularly, though, is simply the engineer's relationship with the client. This is all about clear, honest and open communication, ensuring that nobody gets a nasty surprise later on (ie. discovering that they didn't own something they thought they did, and having to deal with the consequences). Falling out with a client is expensive, if only because of the lost work.Some clients just want the benefit of your design expertise, and understand that what they're getting is a licence to use a design which incorporatesyourIP and whichyouown. This is arguably the most efficient way to work.Some insist - for their own reasons (which may or may not be good reasons) - on owning the design. This is OK; just make it clear that the design will take longer and therefore come at a higher price because you have to start with a blank sheet rather than your known-good pre-existing building blocks. (Even with these jobs, I insist on a specific exemption for my library of schematic symbols and footprints).

author: ricko_uk
author_rank: Super Contributor
timestamp: September 29, 2020, 03:01:14 pm
content: Thank you all,just to further clarify, I am not interested in patenting or registering anything. I have not invented anything new. I just designed my own unique design that, after months of trying different configurations, performs much better than all the other designs they had/did before.The client is asking to transfer full ownership of my design to them so that:1) I cannot use it or sell it to other parties2) they have full control over itI just want to make sure whatever is signed is fair and right in passing over the rights of my specific design. And does not cause me or them any issues in the future.As per my previous post yesterday, I am not looking for official legal advise. Just pointers so I can further research and have much more knowledge and understanding when approaching a professional to draft the contract.Thank you all

author: richard.cs
author_rank: Super Contributor
timestamp: September 29, 2020, 03:29:18 pm
content: Quote from: ricko_uk on September 29, 2020, 03:01:14 pmThis can be done, but may be unwise. My employer (UK) for example generally gives the client an unlimited license to use it for their own purposes, and sometimes agrees not to re-sell to direct competitors, but if someone asks for 1) then we normally put a zero on the end of the price and the client then usually decides they didn't need it after all. Unless the design is so specific to that customer as to have no re-use value to you in the future,andyou have used none of your standard design blocks that you use in all your designs / have already given to other customers, then generally agreeing to 1) is a very bad idea.

author: Benta
author_rank: Super Contributor
timestamp: September 29, 2020, 05:59:41 pm
content: Quote from: ricko_uk on September 29, 2020, 03:01:14 pmDon't go there. Those demands are only disadvantageous to you and there's no protection for your client, although they seem to think so.The only protection available is copyright, which won't help your client if someone copies the design and redraws the schematics and PCB layout.The basic deal is: your client apparently has no own competent engineers and shops out the design for a fee. Period.

author: bdunham7
author_rank: Super Contributor
timestamp: September 30, 2020, 01:07:32 am
content: Quote from: ricko_uk on September 29, 2020, 03:01:14 pmFirst, make sure you read some of the very good comments above from richard.cs, AndyC_772 and Benta. Sometimes companies don't have set plan to screw you over, but they do want you to sign away as much as possible so that they are holding all the cards in case of any future problems. This applies to all sorts of business and law, not just IP or contract work.If you are determined to 'transfer' your rights to this design, I'll give you a few points to ponder before you consult someone.First, please don't restrict your thinking to 'copyright' or 'IP law'. When a dispute arises, you don't get to choose what type of law someone sues you under. A deal like this could potentially have issues in IP, contract, regulatory or even antitrust (don't laugh) or some other law. Form what you describe as going on, I really doubt it would go beyond the first three I listed, but anything is possible. Don't show up at your lawyer's office and insist that you have 'an IP issue'. Things like circuit boards are at the fringe of what is considered the copyright domain and a lot of copyright concepts, like 'what is a derivative work' are only applied with some difficulty.Next, consider which direction the problems might come from. The issues with transferring anything, whether it is a copyright or a property deed, are 1) what am I selling and 2) do I actually have the right to sell it and 3) what are the rights and responsibilities of the parties afterwards. What you are describing might give your client more rights than you think. I think you would have to find a way to do it on a basis similar to a 'quit-claim', where you expressly disclaim any representation that you actually own the rights, simply that you are relinquishing whatever rights you have to that specific, exact design--and not to any similar design you might do for someone else. I don't know how you would do that in your jurisdiction.Perhaps, after a visit to counsel, you might visit your client and say "There are some issues with this type of IP transfer. What exactly do you expect from the deal as far as restrictions on me or responsibilities on my part?" They may be well aware of all these things and hoping you aren't--or they may have no idea. Are they concerned that you won't let them modify the design, or have someone else modify it? Find out what they really want.

author: bson
author_rank: Unknown
timestamp: September 30, 2020, 05:56:07 pm
content: PCB layouts are definitely copyrighted designs.

author: bdunham7
author_rank: Super Contributor
timestamp: September 30, 2020, 06:04:42 pm
content: Quote from: bson on September 30, 2020, 05:56:07 pmOK. Now what?

author: Benta
author_rank: Super Contributor
timestamp: September 30, 2020, 06:20:13 pm
content: Quote from: bson on September 30, 2020, 05:56:07 pmYes, if you do a 1:1 copy. But moving a few components around, changing the routing a bit etc., then that's no longer the case.

author: AndyC_772
author_rank: Super Contributor
timestamp: September 30, 2020, 09:33:11 pm
content: This is the point where it all starts to get confusing, though. Move a few components around - starting with a copyrighted design - and you've produced a derivative work which you may not be licensed to do.Legal or not, though, you definitely risk breaking your relationship with the original designer. Two people can much more easily end up distrusting each other than they can actually suing each other, and in the long term that can be expensive too.

author: bdunham7
author_rank: Super Contributor
timestamp: September 30, 2020, 09:50:33 pm
content: Quote from: AndyC_772 on September 30, 2020, 09:33:11 pmAnd if it is your design but you weren't careful in your contract process--perhaps you stipulated that it was a work for hire--you might not have the right to make a derivative of your own design. And where the line is for what is a derivative is anything but clear to me in the case of PCBs or ICs, even when there are specific laws that have been enacted to provide copyrights to those areas.https://www.lexology.com/library/detail.aspx?g=ecbb24af-4a0a-4971-9022-2edfeac253ebQuoteLitigation can be years or even decades after the original deal and very often one or both parties are successor entities--not the original people.

author: ricko_uk
author_rank: Super Contributor
timestamp: September 30, 2020, 10:44:16 pm
content: Thank you all for the feedback!And thank you Bdunham7 for the additional details

author: E-Design
author_rank: Regular Contributor
timestamp: October 01, 2020, 12:28:13 am
content: Quote from: Benta on September 28, 2020, 04:37:55 pmTotally poor advice here. Some circuit designs and ideas that are patented, make far far more revenue than the cost to get it patented + maintenance.now how likely that is - depends in the details and markets. Look up some of apples utility and design patents. Furthermore, protecting your IP doesn't always mean spending lots of money and litigation.Also, software can be patented in certain circumstances. The OP didn't say he was only going for the UK market.

author: thermistor-guy
author_rank: Frequent Contributor
timestamp: October 01, 2020, 01:31:01 am
content: Quote from: ricko_uk on September 29, 2020, 03:01:14 pmI have dealt with IP lawyers and patent attorneys. Since you are after pointers:1. Keep in mind that your client's lawyers may tend to overreach - insist that you give more than they actually need. This is so that, even if the agreement has some loophole, what they actually want is likely still protected. Overreaching results in a simpler contract (for them) and more certainty. Lawyers crave certainty. A client's management should be driving the negotiations, but sometimes the lawyers do, and from a legalistic perspective. Be aware of who exactly you are arguing with, and why, when it comes to sticking points in the contract's wording.2. Watch out for the absence of termination dates and conditions from the contract; presumably, you do not want to enter into a life-long agreement (hint: legal certainty). You are not marrying your client.3. Think through some important "use cases", and how the contract applies in each case. E.g.(a) Your client wants you to refine the design at a later date. Are you obligated to do that? If so, does this existing agreement apply to that new work?(b) Your client gets into litigation with a competitor over the design. Your client insists you appear as a witness in court at your own cost, whenever the client requires it. Are you obligated?(c) Your client sells or licenses some rights of the design to another party. Do you have any obligations to that other party?4. When you engage a professional, watch out for overbilling. I have had a lawyer bill me for conference calls that never took place. And watch out for professionals who lack experience in representing creative people - inventors, performers, artists. If you start to think your lawyer is less competent than you are, run away.

author: richard.cs
author_rank: Super Contributor
timestamp: October 01, 2020, 08:41:15 am
content: Quote from: thermistor-guy on October 01, 2020, 01:31:01 amThis is definitely my experience.

author: Benta
author_rank: Super Contributor
timestamp: October 01, 2020, 08:24:06 pm
content: Quote from: E-Design on October 01, 2020, 12:28:13 amWho is talking about patented cicuits here? No one except you. This is about normal circuit design.

author: tszaboo
author_rank: Super Contributor
timestamp: October 01, 2020, 08:37:59 pm
content: Here is my opinion on this: We regularly hire consultants to do us work. If the consultant would claim, that the job we are paying for is his IP, we would show him the door.Even if you have an already existing customer, probably your chances of getting him to hire you again would decrease.Your customer is unlikely to make money with the design. They want to make dodads, not to sell design.So give them everything that they payed for.

author: E-Design
author_rank: Regular Contributor
timestamp: October 02, 2020, 06:06:17 pm
content: Quote from: Benta on October 01, 2020, 08:24:06 pmejeffrey talked about patents.. thats whohttps://www.eevblog.com/forum/projects/intellectual-property-for-a-projectschematic/msg3253132/#msg3253132Patents are one way of protecting your IP (can be "normal" circuit design) so itson topicfor the OP. The IP doesnt have to be a circuit either. The comment about it being expensive is quite often referring to patents and maintaining them and defending them. So again on topic an its up to the OP to decide how relevant to his situation. Normal circuits? what about normal circuits? Whats a "normal" circuit.Additionally, the term "expensive" is relative. What somebody thinks is "expensive", the OP might find very reasonable in cost.I just couldn't help myself from pointing out the bad advice from the uninformed. Everybody's entitled to an opinion about what could/should be done. That's why the OP posted, he wants opinions about what could be done.Contracts is another way to protect (as is already being discussed)Its clearly a tricky situation.

author: Benta
author_rank: Super Contributor
timestamp: October 02, 2020, 07:15:38 pm
content: Quote from: E-Design on October 02, 2020, 06:06:17 pmSomewhat over the top, don't you think?"I'm the champion, all others are idiots!"Let's keep it friendly. I'm certain the users here can do their own filtering.

author: bdunham7
author_rank: Super Contributor
timestamp: October 02, 2020, 07:33:53 pm
content: Quote from: E-Design on October 02, 2020, 06:06:17 pmReference designs from datasheets, circuits from textbooks, common designs in wide use, etc. A lot of things are 'normal' circuits arranged to do what is specifically needed.In order to get a patent you would need anovelcircuit, one neither used before nor 'obvious' to a skilled engineer faced with the particular design challenge at hand.QuoteTypically the people that don't find IP legal work to be 'expensive' are those that are not spending their own money. The small fraction that are spending their own money usually have delusions that it is a good investment.

author: tkamiya
author_rank: Super Contributor
timestamp: October 03, 2020, 12:43:34 am
content: What about liability? If you own the design and possibly copyright or patent on it, either PCB or circuit, can designer be held liable? Say a circuit board goes up in flames and takes a house with it, who's liable?I'm just curious.

author: richard.cs
author_rank: Super Contributor
timestamp: October 03, 2020, 01:00:25 pm
content: Quote from: tkamiya on October 03, 2020, 12:43:34 amIt's not really an IP ownership issue. More that if you create that design and more importantly sell it (or in some cases even when you give it away), you are accepting some responsibility for it, that it meets some basic level of safety, is fit for a particular purpose, etc. That would apply even if you didn't own the IP (not copyrightable, owned by someone else, whatever). If you copy a dangerous design from some random website and put it into a children's toy don't expect not owning the IP to protect you from liability.It is a separate issue, which will be jurisdiction-dependent and which you may want to address as part of your contract with the customer.

author: bdunham7
author_rank: Super Contributor
timestamp: October 03, 2020, 01:34:14 pm
content: Quote from: tkamiya on October 03, 2020, 12:43:34 amI don't know of a case where IP ownership was part of the foundation for a liability case, nor do I see how that would be argued. The one way it might be an issue is establishing the fact that you did the design work. If you are the listed author of a copyrighted PCB layout and it is alleged that the layout itself is defective, it will be hard to deny that it was your work--even if you had help, copied something like a reference design or whatever.I think it is unlikely an inventor or patent holder could be held liable for a defective implementation of that patent by an unrelated party, whether or not a license was granted, unless there are additional circumstances that involve the patent holder in the implementation to some greater degree. I suppose a creative lawyer could come up with a case, but I haven't seen it yet. Perhaps if the invention had a hidden danger that is known only to the inventor, a plaintiff's lawyer would argue that the inventor had an additional duty to warn the licensee of it.

author: tkamiya
author_rank: Super Contributor
timestamp: October 03, 2020, 06:00:13 pm
content: Thank you for detailed answers.

author: bson
author_rank: Unknown
timestamp: October 04, 2020, 08:02:17 pm
content: Quote from: Benta on September 30, 2020, 06:20:13 pmIt's stilla derivative work.

author: bson
author_rank: Unknown
timestamp: October 04, 2020, 08:22:17 pm
content: Quote from: tkamiya on October 03, 2020, 12:43:34 amAs a design engineer while you may have screwed up you're not really responsible. Products are tested, certified, and signed off on by one or more licensed professional engineers. The accountability ends somewhere there, not with you - the PEs can lose their licenses and the business selling it will face legal consequences. The fact that you produced a bad design isn't the problem; the problem is it ever shipped and issues either went undiscovered, or were ignored.

author: Benta
author_rank: Super Contributor
timestamp: October 04, 2020, 08:31:26 pm
content: Quote from: bson on October 04, 2020, 08:02:17 pmWell, if you stick to that definition, the transistor symbol is under copyright according to the "Sonny Bono/Mickey Mouse" copyright act from 1998.Death of the creator plus 70 years.We're going to be sued...

author: ricko_uk
author_rank: Super Contributor
timestamp: October 07, 2020, 03:36:39 am
content: Thank you all for the feedback.The client is adamant to include the paragraph below but I am not sure what it really means nor what the potential liability (if any) it would create to my business. It mentions "indemnify" which together in such a cryptic phrase makes me cautious (especially the part highlighted). They have been misleading with words in correspondence in the past to get lots of extra work for free so I want to be extra cautious with anything I sign.Again I am NOT asking for any legal advise, just pointers and clarification on what that does or might mean so I am fully informed when I approach a company law advisor."By this Agreement, and conditional on the transfer of the IPR and delivery of the Deliverables, the Parties release each other from any and all claims, causes of action, demands and liabilities of whatever nature which either Party had in the past, has now or may have in the future arising from or related to the Contract .The Parties further release and indemnify each other from any and all claims, causes of action, demands and liabilities of whatever nature which may arise from either Party’s obligation to any and all third parties under the Contract.The Parties acknowledge by this Agreement that the consideration provided and received by each other is fair, just and reasonable and that no further consideration, compensation or obligation will be due, payable or owing with regard to the Contract as of the execution date of this Agreement."Thank you

author: bdunham7
author_rank: Super Contributor
timestamp: October 07, 2020, 04:48:30 am
content: I'd be thrilled on your behalf if the term 'indemnify' wasn't in there. Release and indemnification are two different concepts, although this isn't the first time I've seen this. I doubt they are deliberately setting you up---it is probably just feeble-minded legal work, but it could be an issue and you should raise it with your counsel to see how the term would be interpreted in this context and in your jurisdiction. You also might want to ask about the validity of prospective releases. You can read this for more:https://www.propertyinsurancecoveragelaw.com/2011/09/articles/insurance/knowing-your-agreement-release-and-indemnity-are-related-but-distinct-legal-concepts/

author: ricko_uk
author_rank: Super Contributor
timestamp: October 07, 2020, 06:57:18 am
content: Thank you bdunham7Ref the "indemnify" not being there, yes, me too...! I looked at various forums about it but cannot think of an excuse to support my suggestion of it not being there. Can you? Even a remote possibility that I can mention as reason for me not wanting to sign if that "indemnify" word is there?Thank you again

author: AndyC_772
author_rank: Super Contributor
timestamp: October 07, 2020, 07:59:28 am
content: I can't claim to fully understand the implications of the phrase you've highlighted, but what I would point out, from one engineer to another, is that you always have the option to say 'no' and shouldn't feel like you have any obligation to justify yourself."I'm not comfortable with this wording" is justification enough.I've come across a number of organisations who just aren't used to being told 'no'. It really throws them. This is OK! Far betternotto do a deal that places you at excessive risk, than to have to pick up the pieces later on.In these situations I've often also found that the person presenting me with a contract has a very different idea of what the wording actually means than I do. I've been told, straight to my face in person, that a contract includes <favourable term>, only to read it myself and find the exact opposite.Whether that difference is down to personal interpretation or a deliberate attempt to deceive changes the response slightly. In one case it's "no, let's revise this until we're both happy it reflects our intent", and in the other it's "no, not now, not ever, and goodbye".

author: richard.cs
author_rank: Super Contributor
timestamp: October 07, 2020, 08:47:43 am
content: Quote from: AndyC_772 on October 07, 2020, 07:59:28 amI have come across this quite often, it seems common for them not to understand the implications of what they're asking for (though their legal team probably does).Quote from: ricko_uk on October 07, 2020, 03:36:39 amI can't really help with meaning here, sorry.Quote from: ricko_uk on October 07, 2020, 03:36:39 amYou should find them willing and capable to explain all the possible implications, talk through whether it's a "usual" thing that most people ask for or if they're asking for something odd or excessive. They may hold back from telling you what youshoulddo, but if you don't leave with a clear understanding of what is being asked, it's implications, and perhaps some idea what they really wanted then you should go somewhere else. Yes, it's helpful to go in having read the contract and having a list of points that worry you and you want to discuss, but really you want them to go through the whole thing as they may pick up on things you miss.

author: electrolust
author_rank: Unknown
timestamp: October 07, 2020, 12:41:31 pm
content: Quote from: ricko_uk on October 07, 2020, 03:36:39 amHonestly, you're wasting your time. I refrained from multiple response before, but I must ...Both sides here are obviously naive. Contracts are only as good as the paper they are written on. The only time IP in a contract will matter is if it comes to court. There is no way you or your client can pursue or defend such a case. The costs for such suits are astronomical. If you had the capability where this even matters, you'd both have in-house counsel.In the USA, I suppose most places, contracted work is work-for-hire. You by default assign IP to the client. There is no need for specific assignment.It's a waste of time to even seek info, "in preparation". It is totally legit to just want to educate yourself, but your lawyer will educate you much more efficiently.QuoteThis is completely unacceptable language. Your lawyer will redline it so as to be acceptable.It's likely that your client has a very weak lawyer, to even propose such language. Or, it's actually self-written by the client, not by a lawyer I mean.

author: mag_therm
author_rank: Frequent Contributor
timestamp: October 07, 2020, 04:13:31 pm
content: You have to provide some kind of warranty I think.My business (one engineer, me) assigns the patents and transfers the designs and software to the clients.The contract terms are that the the warranty is limited to either the replacement , orrefund, up to the limit of the fees paid for that part. The contracts state no liability for consequential damages.In 17 years, there have been no problems. Whether the contracts would stand up is unknown!There have been a few minor cases where my side screwed up, and just corrected the problems.There is a problem with liability insurance for small vendors of engineering.I work internationally, on industrial projects that can have very high costs if something goes wrong.I have made inquiries two times, in Australia and USA for liability insurance.The brokers may just offer a standard business insurance, but the fine print makes it worthless.Then the broker may not be able to find a provider, or, the annual premiums are just not worthwhile.This problem is in Australia at this time where some small engineering providers report they can not find suitable coverage.The Engineers Australia is wanting engineers to have personal liability insurance for one of their membership grades.But it is naive , in my opinion. It may lead to clients having un-met expectations when the crunch comes.The Australian states are introducing compulsory registration of engineers, but at this time not requiring liability insurance.(At least Queensland is not, where I am registered.)

author: SiliconWizard
author_rank: Super Contributor
timestamp: October 07, 2020, 04:47:23 pm
content: Quote from: Benta on September 29, 2020, 05:59:41 pmWell, that's actually a pretty common request from clients for a design house. I've see this quite a few times.Of course this is not an advantage to you. But I see two different parts in this request:* Exclusivity (the first item): this is the one problematic for you (as it restricts what you can use in further designs for other clients, sometimes in more ways than you may think), and not necessarily that big an advantage for the client. I think the client is probably interested in that to make sure 1/ they won't have to deal with a competitor using the same "technology" - that they ordered specifically to begin with - and that the "technology" they now use is kept "secret" in some way.* Full control: now this one request is actually fair and understandable. The problem, if you don't transfer your rights to the client, is that legally speaking, you could actually PREVENT them, in the future, from either modifying what you designed for them, or using it for another purpose than what was defined in the original contract. No client wants that, unless they are really just ordering a one-shot thing just for a short-term need.My general advice to deal with this is not to transfer "full ownership" (whatever that would really mean, it's a can of worms), but add clauses in the contract about what you can do and cannot do with the design and what your client can and cannot do. Be precise, be detailed, and keep it from a contractual POV. For instance, state clearly that you reserve the right to use parts of the design in another project (provided you don't breach confidentiality clauses that you haved define with your client, of course, also in the contract), and also state clearly that the client is allowed to modify any part of the deliverables as they see fit, and use them in other projects of their own. End of the story IMHO, that guarantees proper rights for everyone, and that's defendable as it's contractual.Now if the client's intent is more than that - for instance they want "full ownership" to potentially be able to later patent part of the design you made for them - then I'd say it's absolutely NOT fair use of a contract work. If that's what they want, get away. Or deal an enormous amount of cash in exchange for that, if you are OK with the idea.

author: AndyC_772
author_rank: Super Contributor
timestamp: October 07, 2020, 07:05:07 pm
content: Quote from: electrolust on October 07, 2020, 12:41:31 pmThat's exactly contrary to what my solicitor told me when I started contracting. The copyright in a creative work vests in its creator.It's why employment contracts normally do include clauses which explicitly state that all right and title in an employee's workbecomesthe property of the employer. If a job is full time, and the employee isn't doing similar work for anyone else, then that's fair enough, IMHO.It's not the default position in law, though, and nor is it something that's automatically included in a contractor's terms, for good reason.

author: Connecteur
author_rank: Frequent Contributor
timestamp: October 07, 2020, 07:11:08 pm
content: To my understanding, the most legal jeopardy results from replicating intellectual property and selling it for profit. The penalties for personal use are usually slight to nonexistent.

author: bdunham7
author_rank: Super Contributor
timestamp: October 07, 2020, 07:43:10 pm
content: Quote from: ricko_uk on October 07, 2020, 06:57:18 amA mutual release, if valid prospectively, would seem to be in your interest, as it seems pretty unlikely that you would be the one to have a direct cause of action against them in the future. You don't want to actually indemnify them, which would mean that you agree to defend against and compensate for any claim raised against them, like an insurance policy for them underwritten by you.Although the concept of 'mutual release and indemnification' seems like an oxymoron to me, it seems to be regarded as merely a tautology in many circles. Start by asking them to tell you what they think that the clause means in plain words, then ask your lawyer if that clause would have that meaning in your jurisdiction.