tcooper Posted May 8, 2009 Report Share Posted May 8, 2009 I am reviewing an NDA from a perspective subcontractor and they want disclosed to each other (our company and the sub) in writing, all ideas, inventions and discoveries relating to joint efforts. The ideas, inventions and discoveries shall become the property of the originating party. The clause is much longer but this is the general objective. My company's Project Manager is worried that the perspective subcontractor might be able to claim itellectual property rights for work that we paid them to do. Any ideas on editing this clause? Tom Cooper Link to comment Share on other sites More sharing options...
brian Posted May 8, 2009 Report Share Posted May 8, 2009 . Tom, it would be foolish to take advice from me on IP. But that never stopped me from giving it. I would counter the idea that they get a free ownership stake in the IP by suggesting that the sub can only claim ownership of IP developed under the effort if the costs are borne jointly, and that they have to tell you ahead of time if they intend to bear any of the costs, because your firm thinks that you are paying for the entire effort. Pin down the cash or in-kind investments that they think they are going to make. That may help illuminate for them why you don't think they should get an ownership stake in the IP that is produced. To help you understand where they're coming from, if you don't already, consider that in many prime contracts with the Government small r&d outfits get paid to develop IP, and then get an ownership stake, and it doesn't cost them a dime. They may be thinking they can get the same deal with you if they think that only they can do the work. Did you say anything that might give them that impression ? Is it true ? . Link to comment Share on other sites More sharing options...
tcooper Posted May 8, 2009 Author Report Share Posted May 8, 2009 .Hello Brian, Thanks for your opinion, it sounds really good. I'm not sure about what may have been negotiated verbally between the program manager and the subcontractor. They like to do their own contracts work and then come to my department when there's a problem. I'll ask him next week and get back to you. Much thanks, Tom Tom, it would be foolish to take advice from me on IP. But that never stopped me from giving it. I would counter the idea that they get a free ownership stake in the IP by suggesting that the sub can only claim ownership of IP developed under the effort if the costs are borne jointly, and that they have to tell you ahead of time if they intend to bear any of the costs, because your firm thinks that you are paying for the entire effort. Pin down the cash or in-kind investments that they think they are going to make. That may help illuminate for them why you don't think they should get an ownership stake in the IP that is produced. To help you understand where they're coming from, if you don't already, consider that in many prime contracts with the Government small r&d outfits get paid to develop IP, and then get an ownership stake, and it doesn't cost them a dime. They may be thinking they can get the same deal with you if they think that only they can do the work. Did you say anything that might give them that impression ? Is it true ? . Link to comment Share on other sites More sharing options...
brian Posted May 9, 2009 Report Share Posted May 9, 2009 . Tom, my IP experience is limited to NDA's I had with employees who were already disposed to be loyal to me. Piece of cake. Your situation is much trickier. This is a case where I recommend asking an attorney for help, not as a way to CYA, but because she or he will either have expert knowledge, or can get it. And if the Program Manager has already promised the World, good luck in negotiating for less. . Link to comment Share on other sites More sharing options...
tcooper Posted May 11, 2009 Author Report Share Posted May 11, 2009 Thanks for your response. Tom Link to comment Share on other sites More sharing options...
Don Mansfield Posted May 11, 2009 Report Share Posted May 11, 2009 I am reviewing an NDA from a perspective subcontractor and they want disclosed to each other (our company and the sub) in writing, all ideas, inventions and discoveries relating to joint efforts. The ideas, inventions and discoveries shall become the property of the originating party. The clause is much longer but this is the general objective. My company's Project Manager is worried that the perspective subcontractor might be able to claim itellectual property rights for work that we paid them to do. Any ideas on editing this clause?Tom Cooper Tom, What does the agreement say about rights in IP? Ownership of IP and rights in IP are two different things. Link to comment Share on other sites More sharing options...
Don Mansfield Posted May 11, 2009 Report Share Posted May 11, 2009 Tom, it would be foolish to take advice from me on IP.But that never stopped me from giving it. What's worse, giving bad advice or no advice? Link to comment Share on other sites More sharing options...
.gif)
Recommended Posts