Question
Good evening, everybody!
I am working with a team of IT and Marketing specialists on an app-development project, which we intend to monetize and turn into a successful venture. We do not have the luck to count a lawyer among our members so I am very interested in this "Ask an Expert" feature.
Soon we will start farming out some of the work to third-party contractors. I would like to know: If I hire someone to work for me on a clearly defined project, do I automatically own the Intellectual Property that is created by the contractor? I assume it is probably not that simple, so what kind of steps do I have to take?
Thank you very much!
Answers: 3 public & 1 private
Hi
The US patent attorneys on this portal will be able to give more detailed advice but to answer generally - No, you don't automatically own the IP.
I don't know where your third-party contractors will be based but in many territories, a distinction is made between employees and non-employees. IP created by employees in the “course of business” usually belongs to the employer. For anyone who is not an employee, you need a contract in place not only assigning (transferring) IP to you but describing exactly what is being transferred. This is because the developer may want to license rather than transfer certain elements of IP to you. For instance, a developer working with other clients as part of their own business may need to retain the source code they already use because transferring exclusive use to you would in effect put them out of business once they move on from your project.
You say you hope to turn this into a successful venture, I would strongly advise you don’t scrimp on your legal advice, try to find and negotiate a fee with a good attorney who works in this particular field.
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