Intellectual property & contracts 2

[10Gallen]

Hi all, this is not strictly the place to post this, but there doesn't appear to be an appropriate forum.
I'm sure many of you have been in the position where a contract between the engineer and the client includes clauses along the lines of:
"all inventions, discoveries and improvements etc made during the provision of services to the client...blah blah blah...remain the property of the client."
These clauses have never concerned me as it never seemed likely that an earth shattering or novel approach to problems would result in something intellectually valuable, after all, its sorta what we're supposed to do in the course of our work.
Have any of you been faced with a design which while specific to the initial client, has wide ranging application with minor modifications, to areas greatly diferent from the clients original project? If so, how has the "intellectual property" clause affected you.
As you can guess, I await your comments anxiously!
GAllen

 

[RDK]

The design was not one of mine, but I did work on a project where the designer came up with a novel and extremely cost effective solution to some old sagging wooden trusses.

In WW2, as part of Canada’s contribution to the war effort there was a program for training pilots. It was called the Commonwealth Air Training Program. It trained flyers from the UK as well as most commonwealth countries in Canada where the students were free from enemy pilots and the weather and terrain are suitable for the flying training. As part of this program somewhere around 2,000 aircraft hangers were built. These used 112’ massive timber wooden trusses that have in a lot of cases sagged and have been maintained poorly over the years. Some if these buildings are still used by DND (Department National Defense) but the majority are now in private hands.

The solution was to overlay the wooden members with steel strips. The steel strips were intended to carry the loads and the wood members were intended to provide lateral stability and prevent buckling. If you have ever designed long slender members, you know that the buckling resistance requires more steel than the tension or compression does.

This fix allowed a hanger to be reinforced for a fraction of the cost of any other of the proposed solutions. The designer won national design excellence awards for this work. They put on all their drawings that the design was the property of the designer. This was acceptable to the first client who only had 4 of these buildings to consider. They then did some work for DND who had hundreds of these buildings. They got into a fight on the issue of design ownership and would have walked away from the contract if they were not guaranteed the design copyright.

10Gallen, have you come up with something and now want to retain ownership or are you negotiating a contract where this might be a possibility and want to know how to proceed?


Rick Kitson MBA P.Eng

Construction Project Management
From conception to completion

http://www.kitsonengineering.com

 

[10Gallen]

Unfortunately I have already signed the contract, and 2 days ago finally got around the problem of a sludge sump bung in a large pond.
I have never resisted the type of clause described, as I had never anticipated this situation - namely that this device which has application to areas outside the clients field of interest may be difficult to incorporate into future projects if he decides to exercise his rights. And theres no denying that being able to put my name on a corner of the device is attractive!
Cheers,
GAllen

 

[RDK]

I always operate on the theory that every clause in every contract is always open to being renegotiated.

Why don’t you simply ask the client if you can buy back the rights to this invention? Don’t oversell the applicability of the device or under misrepresent the potential of it, just try the approaching this as any other contract negotiation? You know your client better than we do. Is the value of the invention worth more than the contract? Cancel the fees and keep the rights?

Also most employment contracts as well as common law gives the employer the rights to the work product of any inventions etc. Even if the client agrees to sell back the rights, you may not personally own them unless you are self employed or own the company.




Rick Kitson MBA P.Eng

Construction Project Management
From conception to completion

http://www.kitsonengineering.com

 

[sc]

Have a look at a similar discussion in:

Corporate Survival > Personal Strategies > How to Improve Myself to Get Ahead in My Work Forum > Personal Copies of Plans
I really must learn how to link discussions one day!

Regards

sc