Intellectual Property Rights

[Boris]

I'm looking at a new contract which, amongst the usual fluff, has a section on intellectual property rights.

The contract basically states that any IP I develop or create, whether or not during the contracted hours, belongs to the client. In addition, I'm expected to assign any *existing* rights, patents, and copyrights to the client. Unsurprisingly, I don't agree with these clauses and will attempt get them changed.

My suspicion is that this is a standard lawyer-delivered contract that the client probably hasn't even read themselves.

QQ: in the UK are these things actually enforceable / legal? (I agree that anything I build for the client is theirs, but I do other stuff too, including open-source and support work other clients)

Boris

[NotAllThere]

Yes, it's enforceable. Yes, as a contractor you must contest it - you may have another client for whom you do work, so it clearly conflicts with your business model.

[Lance]

Yes, it's enforceable. Yes, as a contractor you must contest it - you may have another client for whom you do work, so it clearly conflicts with your business model.

Also probably conflicts with the contracts OP has with other customers.
It needs rewording.

[WordIsBond]

Anyone else find it interesting we have a Boris asking about a new contract and whether stuff is enforceable, at this particular moment in history?

[Boris]

Hmmm

Anyone else find it interesting we have a Boris asking about a new contract and whether stuff is enforceable, at this particular moment in history?

Well if I don’t sign the contract it will still be accepted of course!

[Boris]

Yes, it's enforceable. Yes, as a contractor you must contest it - you may have another client for whom you do work, so it clearly conflicts with your business model.

We are now at a stalemate: the client insists it’s never enforced and is just part of a standard contract. So I asked for it to be reworded or deleted. Can’t be done - otherwise it wouldn’t be a standard contract.

Current tack is to get them to commit in writing by email that it won’t be enforced and only applies to the ‘work product’ of their contract.

I’ll give it another day and then thank them for their interest and decline to proceed.

Pity, would have been a fun gig.

[tomtomagain]

We are now at a stalemate: the client insists it’s never enforced and is just part of a standard contract. So I asked for it to be reworded or deleted. Can’t be done - otherwise it wouldn’t be a standard contract.

Current tack is to get them to commit in writing by email that it won’t be enforced and only applies to the ‘work product’ of their contract.

I’ll give it another day and then thank them for their interest and decline to proceed.

Pity, would have been a fun gig.

Do you have any existing IP or patents etc? And do you work on any projects out-of-hours?

Personally I'd never sign anything with those requirements, but then I *do* have IP. If you don't then it's a risk you could decide to take.

[Boris]

Do you have any existing IP or patents etc? And do you work on any projects out-of-hours?

Personally I'd never sign anything with those requirements, but then I *do* have IP. If you don't then it's a risk you could decide to take.

I contribute to a couple of open-source projects, so technically yes I do generate & own some IP that could be caught up in this.

The client is now essentially saying "take it or leave it" - they won't accept changes to their contract. In fact they seem rather affronted that I'm asking for it.

Silly people

[NotAllThere]

We are now at a stalemate: the client insists it’s never enforced and is just part of a standard contract.

That stands up with other lies such as "no-one else has asked for a change". If it is never enforced then there is no reason for it to be part of the contract. And it's easy. You strike through that clause, initial and date it, and then sign the contract. Send it back with a note to say that you've amended it by striking out the never enforced clause.

If they don't accept it, walk away. They're clearly not the kind of people to whom you wish to provide services, as such ****wittery will raise its head elsewhere - guaranteed.

[tomtomagain]

I contribute to a couple of open-source projects, so technically yes I do generate & own some IP that could be caught up in this.

If you contribute to OS projects, you probably don't "own" the IP, the projects are by their nature open and almost certainly have a permissive license already attached. You've already waived your right to claim the IP. So it's not in your gift, even if you wanted to, to transfer the rights on bits of code within those projects, to another 3rd party. If it was OS would have been dead a long, long time ago.

Also it's not reasonable for you to be forced to hand over any property ( the P in IP ) as a pre-requisite for starting a contract without remuneration for that property. Whether it is enforceable in a court .. IDK.

If you started a contract as a delivery-driver and they said : "If you have a van, we will own that van" ... what would you say? I'd say, "If you want my van, you must pay for it". Either that or F'Off.

The client is now essentially saying "take it or leave it" - they won't accept changes to their contract. In fact they seem rather affronted that I'm asking for it.
Silly people

If they are a software product or SAAS company then they are not being that silly. They want to guard against you taking their IP and regurgitating it later at their competitor ( or putting it into your OS project ) and they don't want the risk of you putting anything into their product that someone at a later date will claim IP on.

So for example, if you have IP on an algorithm that you then implement within their code-base, they don't want to be on the hook when you sell your IP to some patent troll.

If they are not a techie company then they are probably just being a pain in the ass.