Open ended contract terms on IP

[grafton]

Hoping to get some fair opinions here. I have been asked to sign a contract containing general claims on intellectual property rights from a fairly well known recruitment agency in tech sector. The recruiter told me this is their standard template they give out to all candidates. Is it typical for a recruitment agency to claim all future inventions for its own benefit?

6.1 The obligations set out in this clause 6 shall be performed by the Contractor in favour of MS or, in the sole discretion of MS, in favour of MS’s nominee (which may, without limitation, include the Client), and in this Clause MS includes its nominee.

6.2 The parties recognise that the Contractor (or its Consultants) may make Inventions and develop other Intellectual Property Rights in the course of the Services provided by it.

6.3 In consideration for the payment for the Services as provided in this Agreement, the Contractor hereby assigns (free from all encumbrances) to MS all rights in and to the Inventions and all Intellectual Property Rights which vest in the Contractor (and/or the Consultant) and which relate to or arise out of the Services, present or future. The Contractor and/or the Consultant shall execute any document required by MS or its nominee in relation to such assignment.

6.4 The Contractor shall:

(a) promptly provide any Inventions and other Intellectual Property Rights to MS for the exclusive use and benefit of MS, and give all information and data in its and/or the Consultant’s possession as to the exact mode of working, producing, using and exploiting such Inventions;

(b) at the reasonable request of MS execute and do all acts and things necessary to enable MS to apply for nd obtain protection for the Inventions in any and all countries in its own name and to vest absolute title to the Inventions and any other Intellectual Property Rights in MS; and

(c) during the appointment and at all times after the end of the appointment do nothing to affect the validity of the protection referred to above, and in particular to keep confidential all and any Inventions and Intellectual Property Rights developed by or for the Contractor until the same is put in the public domain by MS or the Client.

[SueEllen]

Not sure there are many or indeed any IP lawyers on this forum so I suggest you find one and pay them to look at the contract.

[VectraMan]

So MS is the agent?

I guess the key phrase is "relate to or arise from", which is going to be hard to prove unless you do something in direct competition to the client based on what you learned at the client. Which isn't unreasonable.

IANAL, but my understanding was that in general restrictive clauses aren't considered reasonable unless they have a time frame.

[grafton]

Thanks for the prompt comments.

Yes, MS is the agent.

My main concern was that the phrases "which relate to or arise out of the services" and "which vest in the contractor" read more like either/or condition rather than both being the necessary conditions for the clause to apply.

Also, shouldn't he phrase "which relate to or arise of the services" explicitly stated in each of the clauses in 6.4 to be applicable?

[BlasterBates]

I always had to sign similar agreements for all my contracts, however this was specifically for the client. I would be very surprised if this was for the recruitment agency, as it doesn't make sense. They're just recruitment consultants and the code you're writing belongs to the client.

[grafton]

Yeah, that explains why it looked so fishy!! It sounds like regardless of what the end client actually requires, signing this document will give this recruitment agency claim to everything I own present or future. There is no restrictive conditional statements in 6.4 on what MS can or cannot claim from the contractor.

I always had to sign similar agreements for all my contracts, however this was specifically for the client. I would be very surprised if this was for the recruitment agency, as it doesn't make sense. They're just recruitment consultants and the code you're writing belongs to the client.

[SueEllen]

Yeah, that explains why it looked so fishy!! It sounds like regardless of what the end client actually requires, signing this document will give this recruitment agency claim to everything I own present or future. There is no restrictive conditional statements in 6.4 on what MS can or cannot claim from the contractor.

Agencies tend to write clauses that include the kitchen sink which is why if you are worried you hire someone who write it to limit it to what is relevant.

[MrMarkyMark]

Yeah, that explains why it looked so fishy!!

Stinks, more like.

[grafton]

I asked the agency to amend the beneficiary of IP rights from MS to the client, and received the following comments. They seem very adamant on this issue. HN is the parent company of MS, another frequently heard name in the recruitment business.

MS comments: MS does not agree to amend clause 6 as requested As there is no direct contractual relationship between the Contractor and the Client, all IPR passes first to MS and then down the contractual chain to the Client. For the avoidance of doubt, clause 6.1 of the Agreement states that IPR will vest in HN and its nominee and in this instance HN’s nominee shall be the Client.

Clause 6.4 - replace MS with the client, include words in red

“The Contractor shall:
(a) promptly provide any Inventions and other Intellectual Property Rights which relate to or arise out of the Services under this Agreement, to MS for the exclusive use and benefit of MS the client, and give all relevant information and data in its and/or the Consultant’s possession as to the exact mode of working, producing, using and exploiting such Inventions;

(b) at the reasonable request of MS and for the sole benefit of the client, execute and do all acts and things necessary to enable MS to apply for and obtain protection for the Inventions, which relate to or arise out of the Services under this Agreement, in any and all countries in its own name and to vest absolute title to the Inventions and any other Intellectual Property Rights (which relate to or arise out of the Services under this Agreement), in MS; and

[MrMarkyMark]

I suspect the clients view might be very different

Have you considered having the contract reviewed?
Its sometimes better than undertaking negotiations yourself (unless you are a feckin hard barsteward)