My client wants to hire an expert consultant to make part of a product that my client is manufacturing. Both parties are very talented with respect to their particular areas of expertise, but they need each other in order to have a successful product. My client wants to make sure that he has all the rights to the finished product, and that the consultant can’t re-sell his part of the technology to someone else. The consultant feels that his contribution will revolutionize the industry that they are in, and wants money at the back end of the transaction based on the success of the product. For this, he is willing to charge a lower hourly fee up front.
How does this all get sorted out? First, I am grateful that my client came to me before having the Consultant start working. I can work through the details with my client, and document whose bringing what to the table. Another client didn’t, and now no one knows who owns what, with both parties claiming that they have full rights to the product. One issue that comes up most often is that the “concept” originator believes that there would be no product without his creativity. But there is a big difference between saying, “I have a concept for a restaurant where people can eat in their car” and actually creating a McDonalds® franchise. While everyone is friends, there are usually no issues, but when the money starts rolling in, if these matters are not sorted out in advance, disputes arise often leading to litigation.
There are several types of agreements associated with the process of creating “Intellectual Property.” There’s a Confidentiality or Non-Disclosure Agreement, a Work for Hire Agreement for high-level project managers/engineers, an Independent Contractors’ Agreement for the more common activities associated with work to be done, a Certificate of Originality, a Co-development agreement, a cross-licensing agreement a joint venture agreement and more. All of these agreements cover different aspects of the creation process, and have different remedies for a breach.
Call me for a consultation at 925-516-1617 to come see me if you are creating something that will have lasting value, whether it’s an invention, software technology, video games, artwork, music, or just an idea whose time will come. We’ll sort it out together. http://www.alvisfrantzlaw.com/
The information above is not a substitute for seeking legal advice. Barbara Frantz, local resident for 17 years, has 34 years of legal experience, offering proven solutions for business owners to increase revenues and achieve their long range goals. Barbara is a lawyer with Alvis Frantz and Associates, your law firm providing confidence and security, because your business and your family are your highest priority in life. All Rights Reserved
