If you are engaging an engineer, tool maker, industrial designer or software developer (i.e. anyone who will contribute intellectual property to your idea), ensure that he/she assigns all resultant intellectual property to you.
Suggested intellectual property assignment clause:
Recipient may during the course and scope of Recipient's engagement by Discloser develop intellectual property (including, but not limited to inventions, designs, know‐how and copyright) relating to [the idea] ("Resultant Intellectual Property").
Recipient hereby assigns all Resultant Intellectual Property to Discloser. In this regard, Recipient undertakes to sign such documents and perform such acts as may reasonably be required by Discloser to effect such assignment. Furthermore, Recipient waives any moral rights relating to Resultant Intellectual Property.
If you wish to prevent the recipient from using information that may not necessarily be patentable, consider adding a restraint clause.
Suggested restraint:
Recipient shall not for a period of [Enter number] months from the date of signature hereof in [Enter territory]: [Detail activities, e.g. make or dispose of any product that is identical, functionally similar to, or in competition with …].
Recipient acknowledges that the above restraint is reasonable as to subject matter, scope and duration, and is reasonably required by Discloser to protect and maintain the Discloser's confidential information and business interests, and the provisions of the above restraint will be construed as imposing a separate and independent restraint in respect of each of the restrained territories, months falling within the period of restraint, and restrained activities.
Ensure that Recipient is required to deliver to you all tangibles and material in electronic format developed during your engagement, upon request.
Suggested delivery provision:
Recipient may during the course and scope of Recipient's engagement by Discloser create or develop tangibles (including, without limitation, prototypes, manuals and reports) and electronic material (including, without limitation, CAD files and electronic files) (collectively referred to as "Materials"). Ownership in all Materials vests in Discloser, and Recipient undertakes to deliver all Materials to Discloser immediately upon request by Discloser. No consideration is payable by Discloser to Recipient for such transfer of ownership in, or delivery of Materials.
If you wish to engage a software developer, ensure that the developer undertakes to deliver a copy of the "source code" to you. This is often overlooked. Merely assigning copyright in the software and providing for delivery of a copy of the software (often interpreted as being limited to a compiled version / a version in object format code), is insufficient. Without access to the source code, you will likely not be able to update or upgrade your software.
Suggested source code provision:
Recipient may during the course and scope of Recipient's engagement by Discloser create or develop software source code ("Source Code"). Ownership in the Source Code (irrespective of the stage of development) vests in Discloser, and Recipient undertakes to deliver the Source Code to Discloser immediately upon request by Discloser. No consideration is payable by Discloser to Recipient for such transfer of ownership in, or delivery of the Source Code.
Note: If you are developing software, ensure that you conclude a comprehensive software development agreement that details the: software specification; deliverables; payment schedule; milestones (with corresponding deadlines); and support / bug fixing obligations.
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