protecting IP when outsourcing engineering

Question

We are outsourcing development and engineering. What steps should we take to ensure that we own all IP created by the developers?

Answers: 2 public & 0 private

Steven weinrieb
Patent Attorney

You should probably have your development and engineering people sign two documents - 1) a non-disclo-
sure agreement not to disclose anything to third parties, and 2) an assignment effectively assigning all IP rights to your company.

25da12c4d3
Patent Attorney

How far "out" are you outsourcing your development and engineering? As previously mentioned, E&D should be performed pursuant to a services, development, or other agreement that contains provisions (i) assigning ownership of what is created to you, (ii) maintaining the confidentiality of proprietary information, and (iii) obtaining necessary licenses, if any, for preexisting or third-party materials which may be incorporated into the work product(s) by the developers.

Of course, contractual restrictions are only valuable to the extent they may be enforced; thus, having a party across the globe sign the agreement may have little prohibitive effect (you could still use the agreement to establish inventorship, of course).

In short, speak with local IP counsel to draft a malleable services agreement you can use when dealing with developers or other work product providers.

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