Invention Assignment Contract for computer consultant

[FLRussianHubby]

What is the name of your state (only U.S. law)? Florida

Hello. I am currently a private computer consultant and independent software developer, employed by my own class C corporation. My company has been in business for 20 years and has several personally-authored software packages on the market. In addition, I occasionally am contracted by small businesses to write custom software.

Due to the fact that business has been slow lately, I am in negotiation with a large computer consulting firm to be a subcontractor for services related to computer network design, administration, maintenance, and consulting. This could possibly include some software development, but that is unlikely.

Upon reviewing of the contract that they are having me sign, the Inventions & Copyrights section is of a concern to me. Here it is:

12. COPYRIGHTS, TRADEMARKS AND PATENTS.
a. Independent Contractor will promptly disclose to xxx (or persons designated by it) all discoveries, developments, designs, improvements, inventions, formulae, processes, techniques, programs, know-how, data, tangible expression of ideas or other information of possible technical or commercial importance relating to xxx’s Business or which arises out of Independent Contractor’s use of xxx’s time, facilities, or money (all such discoveries, developments, designs, improvements, inventions, formulae, processes, techniques, programs, know-how, data, tangible expression of ideas or other information hereinafter referred to as “Inventions”), whether or not patentable or registrable under copyright or similar laws, made or conceived or learned by Independent Contractor, either alone or jointly with others, during the term of this Agreement.
b. Independent Contractor agrees that all Inventions shall be the sole property of xxx and its assigns, and xxx and its assigns shall be the sole owner of all patents, copyrights, and other rights in connection therewith. Independent Contractor hereby assigns to xxx any rights Independent Consultant may have or acquire in such Inventions. Independent Contractor further agrees as to all such Inventions to assist xxx in every proper way to obtain from time to time, and to enforce, patents copyrights and other rights and protections relating to said Inventions in any and all countries, and to that end, Independent Contractor will execute all documents necessary to obtain such patents, copyrights and other rights and protections or in enforcing the same as xxx may desire.

Specifically, does this section pertain to inventions, copyrights, and IP only developed on the company's time or does it pertain to ALL items even if they are developed on my own time? The wording seems a bit vague. I have read that in some states, inventions on personal time are excluded but I have not been able to find any specifics on Florida.

Also, the contract contains a clause for "Waiver of Jury Trial." Is that normal in a contract like this, or is it a red flag?

Thanks in advance.

 

[Mass_Shyster]

If you are being asked to sign a contract that you don't understand, you would be foolish not to have a lawyer review it with you.

 

[FlyingRon]

Doesn't look vague to me.

The first pretty much defines and requires disclosure of anything you develop relating to their business or is done with their money or on their facilities to them.

The second clause said you will assign all the rights of the above to them.

If it has something to do with their business, it matters not if it was done at home on your own time.

 

[Mister Darcy]

I would not sign it. They have a right to own whatever you create on their dime, but I don't like the first part where it says you will divulge all ideas, inventions, etc. Just too vague and you certainly don't want to be forced to give them what you already have created.

Contact the company and see if they'll reword it. I've never had a problem with an IT consulting firm rewording their contract.

Will this be a corp-to-corp relationship? If not, see if they'll agree to a corp-to-corp (more money??)

 

[FLRussianHubby]

I'm leaning towards Darcy's feelings on this.... Darcy--FYI, this is already a corp-to-corp contract. Like I said, scary, huh?

As for declaring things I've done, that's not a big issue. I can easily provide a list. The problem is that I am an ACTIVE developer working on several projects--this contract is just ONE of those projects (and not even a development project-just a VMWare design/installation). It is not meant to replace all of my income. Therefore, I do intend to continue to service my own clients and also acquire new clients (as long as they are not either negotiating with or already clients of the firm I'm subbing for). So, how do I "declare" future work that I don't even have yet?

Their secretary said I could modify the agreement and have their legal department approve it, but I'm just not sure how to do that in a way that work with future clients and projects are not affected.

 

[Mister Darcy]

I think maybe something like this. Take out the bolded "or" in paragraph a and add the bolded part in paragraph B.

12. COPYRIGHTS, TRADEMARKS AND PATENTS.
a. Independent Contractor will promptly disclose to xxx (or persons designated by it) all discoveries, developments, designs, improvements, inventions, formulae, processes, techniques, programs, know-how, data, tangible expression of ideas or other information of possible technical or commercial importance relating to xxx’s Business or which arises out of Independent Contractor’s use of xxx’s time, facilities, or money (all such discoveries, developments, designs, improvements, inventions, formulae, processes, techniques, programs, know-how, data, tangible expression of ideas or other information hereinafter referred to as “Inventions”), whether or not patentable or registrable under copyright or similar laws, made or conceived or learned by Independent Contractor, either alone or jointly with others, during the term of this Agreement.
b. Independent Contractor agrees that all Inventions as specified in paragraph 12a shall be the sole property of xxx and its assigns, and xxx and its assigns shall be the sole owner of all patents, copyrights, and other rights in connection therewith. Independent Contractor hereby assigns to xxx any rights Independent Consultant may have or acquire in such Inventions. Independent Contractor further agrees as to all such Inventions to assist xxx in every proper way to obtain from time to time, and to enforce, patents copyrights and other rights and protections relating to said Inventions in any and all countries, and to that end, Independent Contractor will execute all documents necessary to obtain such patents, copyrights and other rights and protections or in enforcing the same as xxx may desire.

 

[FLRussianHubby]

I like that. Simple modification and it seems to do the trick.

I have a conference call with their CFO on Wednesday to discuss the contract. I'll propose the change and see if they'll go for it.

Thanks again!