Once upon a time there was a man who was commissioned by a radio station to create a music catalog as part of a consulting contract. This included creating a list of music tracks as well as a rating system for their popularity. The catalogue was original and protected by copyright. However, the consulting contract did not contain a clause indicating to whom the copyright in the catalogue belonged. The radio station was very successful and expanded its services by sending the music catalog abroad. The man claimed the copyright in the music catalogue and, after a legal dispute, obtained the rights to receive royalties for any exploitation of the catalogue by the radio station. The absence of a clause in the consulting contract meant that the author of the catalogue held the copyright in it. That was clearly not the intention of the radio station. The intellectual property clause can be found in virtually any agreement, although licenses and independent contractor agreements both have significant variations with significant differences.
However, the easiest way for the company to obtain ownership of the work product is for the entrepreneur to attribute the work product to the enterprise. This is a simple ownership or assignment clause in the independent contractor agreement to which the contractor assigns all rights, including intellectual property rights, and waives its moral rights in the work product. In addition, the clause may specify how changes to the licensed intellectual property are held. On the one hand, if the licensee modifies or improves the intellectual property, who owns that change? If Licensor is the owner, is Licensor obligated to „return“ to Licensee a license to use this modification? On the other hand, if the licensor modifies or updates the intellectual property during the course of the contract (for example. B when a new version of the licensed software is released), does the licensor automatically receive a license for that change or should it receive a new license? a) If the work is created by an independent contractor, it can only be considered temporary work if all of the following conditions are met: One of the central themes of the independent contractor agreements is ownership of the work product. As a general rule, work performed by an independent contractor is the property of the contractor, not the company. The exception to this rule is when it is a „commissioned work“ described in the next section. In licensing agreements, the intellectual property clause makes it clear that the only intellectual property rights that change hands are those specifically licensed in the license clause. A license is not a transfer, sale or assignment, it does not affect ownership; the licensee is not the owner of the intellectual property licensed to him, the licensor retains the ownership.
The purpose of the intellectual property clause of a license is to clarify that the license is only a license, that it does not affect the ownership of the intellectual property by the licensor, and that any goodwill existing in the licensed intellectual property or any goodwill accrued during the contract is for the benefit of the licensor and not the licensee (goodwill „ownership“ is most important in the trademark license). The intellectual property clause governs the ownership of all intellectual property related to the agreement, including the pre-existing intellectual property of each party. a) Ownership. All inventions, discoveries, developments and improvements made, designed or reduced to practice by the Executive under or from this Agreement („Work Product“), whether such Work Product is patentable or protected by copyright or has been put into practice or reduced or learned by the Executive alone or in conjunction with others, sole and exclusive ownership of the company where the invention is likely to be part of an employee`s work, employers should remember that under patent law, if an invention is patented, the employee may be entitled to legal compensation for the invention in certain circumstances. The employer cannot commit himself outside this right, and therefore all the conditions of the employment contract that aim to eliminate this right are not effective. However, the employer can still successfully ensure that it owns the rights to an invention rather than the inventive employee by indicating in the employee`s job description that their role includes inventing or designing new products and product development ideas. For this reason, it is important for employers to ensure that all employment contracts and contracts with contractors, consultants or designers include an intellectual property clause. Without them, you may find that you do not own the rights created by the contractor, or worse, the contractor is entitled to additional payments.
Use this model contractual clause in an employment contract to reformulate the Intellectual Property Rights Act. It will be particularly useful if, for example, employees design software or carry out development work in laboratories. If the acquired part of the clause is used, the contract must be performed as an act. „Many licenses contain provisions that state that all changes to process engineering are the property of Licensor and that Licensee agrees to assign all right, title and interest in and to such modifications to Licensor. Such provisions create problems not only for the licensee, but also for third parties whose optimization technology for installation is taken into account by management. Therefore, a thorough review of the terms of the applicable technology license agreement and the intellectual property rights of the respective parties contained therein is warranted in view of the optimization strategies that involve technological changes. Failure to conduct such a review of applicable technology licensing agreements can result in several unexpected technology ownership issues, both for the owner of the asset and for the subsequent technology provider. „John Eustermann, Optimizing for Better Economics (via Biorefining Magazine). 8.1 The Institution understands and acknowledges that the pharmaceutical compound made available to the Institution for the purpose of conducting the study is the property of the sponsor and/or that the pharmaceutical compound may be subject to certain intellectual property rights owned or licensed to the sponsor.
This Agreement shall not be considered a transfer or transfer of such intellectual property rights to the institution, unless this is necessary to enable the institution to conduct the study that is the subject of this Agreement. [This intellectual property rights clause assigns to the promoter the rights to any inventions resulting from the activities to be carried out by the examiner, regardless of who might be considered the inventor under the law. This is generally an unacceptable allocation for funded research, but is justified in narrow circumstances: the study must be a clinical trial; the protocol must belong to the sponsor; and it must be closely tailored to achieve the proponent`s expected results.] Any IP generated for a company is only automatically transmitted to the organization if the people who create the IP are employees. .