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Need a legal opinion
Topic Started: Jun 12 2006, 07:17 PM (297 Views)
iainhp
Middle Aged Carp

What does the following mean? In a consulting agreement I'm reviewing - Under Patent rights and copyrights there is a paragraph:

Consultant shall give, and hereby grants, COMPANY a perpetual paid up license under Consultant’s preexisting patents, trade secrets, trademarks, copyrights, mask Works and other proprietary rights which are necessary for COMPANY to use the subject matter of the Work.

Have my own interpretation, just looking for confirmation.
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JBryan
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I am the grey one
I would have a problem with the words "perpetual" and "preexisting" in this language. It sounds like you are granting them license to all your previous intellectual property on into perpetuity since the "necessary" part is open to interpretation.
"Any man who would make an X rated movie should be forced to take his daughter to see it". - John Wayne


There is a line we cross when we go from "I will believe it when I see it" to "I will see it when I believe it".


Henry II: I marvel at you after all these years. Still like a democratic drawbridge: going down for everybody.

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From The Lion in Winter.
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Mikhailoh
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If you want trouble, find yourself a redhead
All consulting contracts contain something to that effect. What it really means is the company owns license to use any intellectual property (software, methods, business processes) you create while engaged by them. Often they also own the rights to resell the product.

It would help to know what kind of work you would be performing.
Once in his life, every man is entitled to fall madly in love with a gorgeous redhead - Lucille Ball
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JBryan
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I am the grey one
The "preexisting" part would indicate otherwise.
"Any man who would make an X rated movie should be forced to take his daughter to see it". - John Wayne


There is a line we cross when we go from "I will believe it when I see it" to "I will see it when I believe it".


Henry II: I marvel at you after all these years. Still like a democratic drawbridge: going down for everybody.

Eleanor: At my age there's not much traffic anymore.

From The Lion in Winter.
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iainhp
Middle Aged Carp
Quote:
 

It would help to know what kind of work you would be performing.


Product development (electronics), but involves some R&D, possibly even some chip work.

The pre-existing is what worries me. Obviously any patents, and trade secrets that I have been involved with in the past have been assigned to the company I worked for at the time. The company I am looking to contract with is very cautious about intellectual property, to the extent that I will not be allowed to work in any areas that may conflict with my previous employer.

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ivorythumper
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I am so adjective that I verb nouns!
I assume is it so that you can't develop something for them that encumbers them into one of your existing patents, copyrights, etc and later have you come back and bill them for using something to which you have intellectual property rights.

I would take the time to itemize what this might entail, and then negotiate about actual assets rather than giving away anything under such broad language.
The dogma lives loudly within me.
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iainhp
Middle Aged Carp

OK - thanks for the advice.

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QuirtEvans
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I Owe It All To John D'Oh
In particular, I'd assume they'd be concerned about what might happen if you transferred those patents or licenses to someone else ... for example, a competitor ... who then sought to stop them from using the thing they just paid you for.
It would be unwise to underestimate what large groups of ill-informed people acting together can achieve. -- John D'Oh, January 14, 2010.
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