IP ownership as a consultant

barman linen · 24-11-2016 4:55pm #1

Anyone got any good case references for ownership of IP created by an independent contractor ?

Scenario is a consultant hired to develop business and they come up with a new product idea. While I understand that I can use the new product - who actually owns the core product and the ability to sell that IP to another party ?

If you need more info let me know...

Graham · 24-11-2016 11:00pm

barman linen wrote: »

Anyone got any good case references for ownership of IP created by an independent contractor ?

Scenario is a consultant hired to develop business and they come up with a new product idea. While I understand that I can use the new product - who actually owns the core product and the ability to sell that IP to another party ?

If you need more info let me know...

Starting with the obvious, what does the contract state?

Tom Young · 28-11-2016 10:32am

IP resides with the paying party in almost all cases, a contract to exclude a contrary scenario may not stand up to any form of scrutiny.

Mr. Incognito · 28-11-2016 10:34am

Depends on the terms of the engagement with the Contractor and the nature of the IP

28-11-2016 10:36am

barman linen wrote: »

...........

Scenario is a consultant hired to develop business and they come up with a new product idea..............who actually owns the core product and the ability to sell that IP to another party ?..............

Whoever hired the consultant, and I'm not referring to the agency/bodyshop.

barman linen · 28-11-2016 12:14pm

Tom Young wrote: »

IP resides with the paying party in almost all cases, a contract to exclude a contrary scenario may not stand up to any form of scrutiny.

The contract is silent on the ownership of IP. The core product is an App that will generate new business.

While the payer/company can use the App and keep the revenue from that instance I would have thought the IP of the App itself resides with the person who created it. They would then have the ability to recreate a competing APP.

Am seeing a lot of US, UK and Australian references but can't find any Irish ones.

Graham · 28-11-2016 12:16pm

barman linen wrote: »

While the payer/company can use the App and keep the revenue from that instance I would have thought the IP of the App itself resides with the person who created it. They would then have the ability to recreate a competing APP.

Who paid the developer for the time to create the app?

barman linen · 28-11-2016 12:25pm

Graham wrote: »

Starting with the obvious, what does the contract state?

The contract is silent on IP ownership - no reference whatsoever. In fact there is an explicit reference to the fact that the consultant is NOT an employee.

Graham · 28-11-2016 12:28pm

barman linen wrote: »

The contract is silent on IP ownership - no reference whatsoever. In fact there is an explicit reference to the fact that the consultant is NOT an employee.

So the consultant was hired and paid to write this app?

ohnonotgmail · 28-11-2016 1:23pm

barman linen wrote: »

The contract is silent on the ownership of IP. The core product is an App that will generate new business.

While the payer/company can use the App and keep the revenue from that instance I would have thought the IP of the App itself resides with the person who created it. They would then have the ability to recreate a competing APP.

Am seeing a lot of US, UK and Australian references but can't find any Irish ones.

Did they pay a consultant to write an app or have they licenced an app from a consultant? If you pay somebody for their time you own what they produce.

IITYWYBMAD · 28-11-2016 3:34pm

ohnonotgmail wrote: »

Did they pay a consultant to write an app or have they licenced an app from a consultant? If you pay somebody for their time you own what they produce.

This is the nub of the issue. We provide apps to clients and act as consultants on a contractual basis. Should we be fulfilling a service, by providing expertise to design and deliver an app to the clients spec, well then the contract states that the IP resides with the client.

Should be retained to deliver a version of our platform to the client, the IP resides with us and we sell a License to Use.

It's all down to the contract signed.

barman linen · 28-11-2016 5:28pm

Graham wrote: »

So the consultant was hired and paid to write this app?

The consultant was hired to do other things - business development. In the course of that work he suggested that an App could be helpful. He paid the developer but I paid the designer initially and paid him to work on the app to the exclusion of his original work.

barman linen · 28-11-2016 5:31pm

IITYWYBMAD wrote: »

This is the nub of the issue. We provide apps to clients and act as consultants on a contractual basis. Should we be fulfilling a service, by providing expertise to design and deliver an app to the clients spec, well then the contract states that the IP resides with the client.

Should be retained to deliver a version of our platform to the client, the IP resides with us and we sell a License to Use.

It's all down to the contract signed.

The developer is not the issue - they have no call on the IP as per your scenario above. The issue is the extra person in the loop who devised the idea and then paid the developer - albeit a developer who previously did work for me.

Messy - but I am only getting to see the potential tripwires here and want to see what references go ahead of me.

ohnonotgmail · 28-11-2016 5:40pm

barman linen wrote: »

The developer is not the issue - they have no call on the IP as per your scenario above. The issue is the extra person in the loop who devised the idea and then paid the developer - albeit a developer who previously did work for me.

Messy - but I am only getting to see the potential tripwires here and want to see what references go ahead of me.

just so we are clear. you hired a business consultant. during the course of his time working for you it was decided that he should work on an app for you. He paid a third party, a developer, to actually write the app. do i have that right?

barman linen · 28-11-2016 5:44pm

ohnonotgmail wrote: »

just so we are clear. you hired a business consultant. during the course of his time working for you it was decided that he should work on an app for you. He paid a third party, a developer, to actually write the app. do i have that right?

Yes - he suggested it was a lucrative business areas and I agree. I paid for some initial design work at the outset. Cash flows made the unbudgeted development work difficult for me so he paid those. We agreed to split revenues from the App. I am concerned however at the IP ownership.

ohnonotgmail · 28-11-2016 7:19pm

barman linen wrote: »

Yes - he suggested it was a lucrative business areas and I agree. I paid for some initial design work at the outset. Cash flows made the unbudgeted development work difficult for me so he paid those. We agreed to split revenues from the App. I am concerned however at the IP ownership.

so the consultant paid for the development? Do you have anything in writing that says revenue is to be split?

barman linen · 29-11-2016 11:54am

ohnonotgmail wrote: »

so the consultant paid for the development? Do you have anything in writing that says revenue is to be split?

Only email exchanges between us. I would have no problem sharing the IP on the same basis but wonder if he could actually take 100% of the IP.

ohnonotgmail · 29-11-2016 11:56am

barman linen wrote: »

Only email exchanges between us. I would have no problem sharing the IP on the same basis but wonder if he could actually take 100% of the IP.

time to talk to a solicitor. the assumption i have always seen is that the person who pays owns the IP.

barman linen · 29-11-2016 12:25pm

ohnonotgmail wrote: »

time to talk to a solicitor. the assumption i have always seen is that the person who pays owns the IP.

Thanks - but need more than assumptions - any case references ?

ohnonotgmail · 29-11-2016 12:31pm

barman linen wrote: »

Thanks - but need more than assumptions - any case references ?

what you need to do is talk to a solicitor. Any precedence is going to consist of "what does the contract say? What was the intention of the two parties".

Graham · 29-11-2016 12:50pm

What does the other party think the agreement is? Have you discussed it with them?

barman linen · 29-11-2016 1:58pm

Graham wrote: »

What does the other party think the agreement is? Have you discussed it with them?

Only the revenue element. I am scheduled to see a solicitor next week so will get advice there.

I think the best way to resolve it is by agreement and put the IP into a separate entity and take it from there.

Graham · 29-11-2016 2:09pm

barman linen wrote: »

I think the best way to resolve it is by agreement

This x 100

IITYWYBMAD · 29-11-2016 4:29pm

barman linen wrote: »

The developer is not the issue - they have no call on the IP as per your scenario above. The issue is the extra person in the loop who devised the idea and then paid the developer - albeit a developer who previously did work for me.

Messy - but I am only getting to see the potential tripwires here and want to see what references go ahead of me.

I never mentioned the developer, I merely outlined what our contracts state, of which we have quite a few and I outlined 2 separate scenarios, both of which we have experience in.

The best advice as actually been given, which is if it's not clear, go and put an agreement in place.

IP ownership as a consultant

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