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Work For Hire Agreement Or NDA - Working With Freelancer?

Postby olimits7 » Tue Aug 10, 2010 5:57 pm

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Hi,

If I’m the creator of a product concept I have, but I hire a freelancer who helps me design/engineer my product; what document would be best to have in place before starting the project this way I retain sole rights on the product idea and patent withouth having a co-inventor listed?

“Work For Hire Agreement” or “Non-Disclosure Agreement” or Both?

The reason I ask is because I found an article regarding this topic, and I'm wondering if an NDA would be enough protection to retain all rights and not have a co-inventor listed.

http://www.inventionconvention.com/ncio ... t/008.html

Thank you,

olimits7

Re: Work For Hire Agreement Or NDA - Working With Freelancer

Postby Scrupulous » Wed Aug 11, 2010 5:25 am

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olimits7 wrote:Hi,

If I’m the creator of a product concept I have, but I hire a freelancer who helps me design/engineer my product; what document would be best to have in place before starting the project this way I retain sole rights on the product idea and patent withouth having a co-inventor listed?

“Work For Hire Agreement” or “Non-Disclosure Agreement” or Both?



In simple terms, neither.

Ownership of invention is still a grey area, as far as anyone need be concerned.

Artwork is given comprehensive protection automatically, because it is easy enough to identify and characterize. You can slap a single sloppy stroke on a canvas with housepaint, and consider it immediately copyrighted.

That's not the same thing as expecting any "work-for-hire" agreement to stand up in the federal court system, with respect to invention. Of course, attorneys will tell you to expect an expensive legal battle, because there is an incentive to litigate. But the overall outcome will be based on fairly simple standards. It will boil down to the fact that whoever truly invents something owns it, regardless of any work-for-hire agreement in place.

The reason is that you can't force someone to invent something, not even if you pay him. According to the law, invention can [and sometimes must] occur by surprise. Inventors are not even required to understand why their invention works. This is very different from hiring someone to perform routine design and engineering tasks leading to predictalble results. It's also very different from commissioning even a famous artist to do whatever he pleases on the side of a building, knowing that it will establish rights regardless. In this sense, the Copyright Act will never apply to invention.

The bottom line is that no one can force you to sign-off on a patent application as the inventor, or an assignment, if you are not comfortable doing so. And, even if your refusal to file for IP rights is used to justify a "hostile" patent application on your behalf, without your consent, then it will still boil down to what is considered fair by a court of law. Ultimately, it will all depend on the nature of any work that is paid for, and how that relates to any invention that is spawned, no matter when or where it occured.

Re: Work For Hire Agreement Or NDA - Working With Freelancer

Postby olimits7 » Wed Aug 11, 2010 8:24 am

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Hi,

Thank you for your reply...

It will boil down to the fact that whoever truly invents something owns it, regardless of any work-for-hire agreement in place.


So if the idea/concept for my invention came from me, and I hire a freelancer to just design/engineer what I wrote within my project outline; since I don't have the skills to design/engineer myself...then I wouldn't need a "work for hire agreement" since I invented the idea/concept myself?

Thank you, again!

olimits7

Re: Work For Hire Agreement Or NDA - Working With Freelancer

Postby Scrupulous » Thu Aug 12, 2010 4:28 pm

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If we're talking about the US, then right ...as long as your concept qualifies as an invention. Let's say you invent concept A, and you have an engineer make it using standard principles relating to your field. If she can successfully materialize your concept, then that would be evidence that the outline of your concept actually enabled a person having ordinary skill in the art to practice your invention (as long as she knew what it was supposed to be used for).

So if, in the process of making your invention A, she invents AB. She would be entitled with rights to AB, if it stood alone as having inventive merit over invention A. But in all fairness, and according to the spirit of US Patent Law, she would not be able to use AB without your permission.