Intellectual Property

HarrierJoe

I am consulting to a company that uses a freely-available product (downloadable from the internet, developed by someone else) to help them get their business idea off the ground.

While working there on it, it has occured to me that I can use this technology in a different way and spin off a potentially viable business.

Somehow the co I am consulting for found out about the idea and now they want me to either partner with them (to have a piece of the action) or restrain me from continuing, as they say, I have researched this technology on their time and money and want to use the consequent knowledge in my own venture. (Altho the idea has come long before I started with this co, i just didn't have the right tools, until now)

I have no signed contract or non-disclosure agreement (not even a verbal agreement in so many words as to non-disclosure) with this company. I am not out to screw them in any way, but i just think that what they are asking is unreasonable. All the sudden they are drafting up a contract that they want me to sign in order to control my future actions in any way, stating that if I am pulling the venture off, "I may be in competition with them". To me it's a very broad statement and there is no way that that is enforceable.

My question is - if I work for a co without any formal agreements as to IP, who does any new ideas generated belong to? Does some form of written contract clearly have to specify that it belongs to the co? (according to the Paris convention?)

I am a consultant, I am not employed by this co.

Any help would be appreciated. If you need more specific info, please IM me.

Jo King

As a general principle nobody can have IP in an idea. One can have I
P in a process which is protected by a patent or one can have IP in a work such a a software program if it is original which is protected by copyright. If research is carried out on someone's equipment then the owner of the equipment may have a claim for a share of the eventual patent.

HarrierJoe

Jo King wrote:

As a general principle nobody can have IP in an idea. One can have I
P in a process which is protected by a patent or one can have IP in a work such a a software program if it is original which is protected by copyright.

Thanks for your reply.

This is where I am a bit vague. We have product X that I am implementing at my customer Y. Seeing that this is something I can use to turn into a viable business, Y wants me to now sign a NDA that I will not pursue any business in direct competition with them. The fact of the matter is that I have no intention on creating direct competition with them, but essentially use product X to it's full capacity with it's available services and functions. Y feels that their idea is completely new, which in a sense is true ito the SERVICE they are providing, but not in employing the product X in they way they use it. Hence it's existence. Most of the functionality I used to develop the software came straight from recommendations made by the developers of product X.

Besides, even patents are not completely fool-proof, as, when it comes to software - you can deconstruct the algorithm, reassemble it in a different way and voila! No patent-breach. It's because there is no clear-cut procedure. In anycase, if Y wants to patent their idea, they will be going head-to-head with the developers of product X as *they* made the functionality available for the processes in any case. But that's besides the point I guess.

I can understand that, and it's also not my intention on using product X to directly compete with co Y. But does that mean that Y can restrict me in developing software using X for another customer if *they* approach me?

If it was a completely new software concept developed in-house, I can fully understand where Y is coming from. But the means is WWW standard methodologies and a freely available software package.

As a result of our conversations, I stressed to Y that I am not agreeing to anything unless it's put into writing (since there is no formal agreements), and even then, if do not agree with what is on paper, I'll probably just terminate the contract. In which case, since nothing is signed and there is no agreements, would they still have any feet to stand on in challanging me in some way?

If research is carried out on someone's equipment then the owner of the equipment may have a claim for a share of the eventual patent.

Understandable, but how does this apply to software development?

Do you think I need to get some legal advice on this? If you can recommend me anyone pse IM me.

Rhonda9000

HarrierJoe wrote:

Thanks for your reply.
Besides, even patents are not completely fool-proof, as, when it comes to software - you can deconstruct the algorithm, reassemble it in a different way and voila! No patent-breach.

This is pardon the pun, patently incorrect.

If an invention has patent protection, a breach will most certainly occur if you reverse-engineer e.g. computer software to do the same job as the original invention.

To obtain patent protection in the first place, the invention must be novel compared with the prior art, useful and non-obvious (an improvement made to something, obvious to somebody skilled in the art is not patentable).

You mention that the computer software you wish to adapt is freeware (?); is there licensing constraints on it's use and if so will same prohibit you from altering it? That would appear (to me at least) to be more of a problem.

HarrierJoe

Hi

Rhonda9000 wrote:

This is pardon the pun, patently incorrect.

If an invention has patent protection, a breach will most certainly occur if you reverse-engineer e.g. computer software to do the same job as the original invention.

There exists no patents.

You mention that the computer software you wish to adapt is freeware (?); is there licensing constraints on it's use and if so will same prohibit you from altering it? That would appear (to me at least) to be more of a problem.

It does not even come to that. I merely want to use a software package that I have implemented with co X (available on the internet), to further my interests.

I guess it's tricky to get my point across - I will do so to the best of my ability , but current co X wants to restrict me from using product Y (not really freeware, but under it's license agreement the usage is free up to a certain point), stating that in using it and building the supporting technical infrastructure to drive product Y, I may use processes that I am currently working on while consulting for co X (I think this is really what it's boiling down to for co X). But then again, the processes is not something new developed at co X, I merely implemented and used functionaly recommended and provided for by product Y's developers.

Hope this answers your question.

Tom Young

TJ McIntyre wrote an article recently which deals with some of these issues:
http://jiplp.oxfordjournals.org/cgi/reprint/jpm077v1?ijkey=PUyOS40LmBKlBXU&keytype=ref

HarrierJoe

Tom Young wrote:

TJ McIntyre wrote an article recently which deals with some of these issues:
http://jiplp.oxfordjournals.org/cgi/reprint/jpm077v1?ijkey=PUyOS40LmBKlBXU&keytype=ref

Thanks for the response. I think this pretty much settles it.

seamus

Please contact a solicitor and read the charter.