Post by thread:[OT]: Intellectual property right

Hi All, This may be specific to Australia but any input would help. over 2 years ago I was asked to develop 2 products for a small company to do data telemetry via GSM. How it was achieved was entirely up to me, ie I developed electronics, software and mechanical design. All worked well and some products are out in the field and running nicely. During this time I have been paid a fee each month to do this work including maintenance and feature additions etc. No contractors or agreements were ever signed. Things have not turned sour as yet, but they are 4 months behind in payments... At present I hold all the design material (source code, layouts) with me, they have no copies. So, question is.. Who actually owns the designs? Thanks for your help - as always :) Regards Peter Mcalpine Sydney, Australia -- http://www.piclist.com hint: PICList Posts must start with ONE topic: [PIC]:,[SX]:,[AVR]: ->uP ONLY! [EE]:,[OT]: ->Other [BUY]:,[AD]: ->Ads

Without a contract. YOU do. Common law leans toward the possessor. That's YOU. --Bob At 09:47 AM 7/17/2003 +1000, you wrote: {Quote hidden}>Hi All, >This may be specific to Australia but any input would help. > >over 2 years ago I was asked to develop 2 products for a >small company to do data telemetry via GSM. How it was achieved >was entirely up to me, ie I developed electronics, software and >mechanical design. All worked well and some products are out in >the field and running nicely. During this time I have been >paid a fee each month to do this work including maintenance and >feature additions etc. No contractors or agreements were ever signed. > >Things have not turned sour as yet, but they are 4 months behind >in payments... > >At present I hold all the design material (source code, layouts) with >me, they have no copies. > >So, question is.. Who actually owns the designs? > >Thanks for your help - as always :) >Regards >Peter Mcalpine >Sydney, Australia > >-- >http://www.piclist.com hint: PICList Posts must start with ONE topic: >[PIC]:,[SX]:,[AVR]: ->uP ONLY! [EE]:,[OT]: ->Other [BUY]:,[AD]: ->Ads --------------- NOTICE 1. This account can accept email & attachments up to 10M in size. 2. Federal Monitors: At request of client, some attachments are encrypted. Please DO NOT delay traffic; please reply with credentials for password. -------------- -- http://www.piclist.com hint: PICList Posts must start with ONE topic: [PIC]:,[SX]:,[AVR]: ->uP ONLY! [EE]:,[OT]: ->Other [BUY]:,[AD]: ->Ads

> At present I hold all the design material (source code, layouts) with > me, they have no copies. > > So, question is.. Who actually owns the designs? My understanding (e-lawyers notwithstanding) is that you hold the authorship copyright unless you explicitly sell or relinquish it to the customer. They would not appear to be in a very strong position. and you should be able to ***diplomatically *** threaten to with-hold services until they get up to date with payments (eg what would anyone do if their employer not paid their salary ? Strike ! that's what). Claim you have expenses that need taking care of, mouths to feed, whatever. Antagonising them is probably best avoided, however tempting A grey area could be intellectual contrbutions to the product Points such as - Who's idea was it ? Is it unique / patentable ? Did you enhance the original idea ? What are the possible rewards from putting up with a bit of crap and hanging in there ? etc etc Softly softly catchee monkey. If you feel the need to bale, get the money first. If you're going to stick around get some paperwork done ASAP. Some people feel intimidated (pointlessly IMHO) by written agreements, but I tell you it sorts out who's serious and who isn't -- http://www.piclist.com hint: PICList Posts must start with ONE topic: [PIC]:,[SX]:,[AVR]: ->uP ONLY! [EE]:,[OT]: ->Other [BUY]:,[AD]: ->Ads

It goes without saying that the ownership rights should be defined in advance in a contract with the buyer. When I was actively practicing law, I saw many examples demonstrating that a few dollars spent on drafting a decent contract at the outset would have saved many hundreds of thousands of dollars a year or two later litigating the respective rights of the buyer and seller. Not that even the best contract can completely stop litigation, but it certainly can improve your chances if the contract language is on your side. Under US copyright law (and I have no idea how Australian law reads) a work may be prepared "for hire" whereby the purchaser has all IPR rights to the work. While this usually applies to employees, sometimes the purchaser will insist that an independent contractor agree to a contract that makes the product a "work for hire." Jack {Original Message removed}

From the way you've described what you did, you were a 'work for hire'. They paid you monthly for your expertise to develop the system, rather than a lump sum for the "sale" of a 'product'. This usually gives them the ownership of the I.P. they paid you to create. However, their (your) failure to have a written agreement would seem to work in your favour since you still have possession of the 'original work' that you created. Also, barring any verbal agreements to the contrary, any implied contract is effectively VOID since they have failed to pay you ALL the 'consideration' in your implied contract. E.G. "In consideration of paying you $XX per month, you agreed to develop a system that ...." and they have failed to live up to their part. Since presumably nothing was said/contracted about ownership of the I.P., YOU still own it since they have failed to fully pay you for it. You have, after all, provided them with a fully working system, and incrementally improved it (their I.P.??) Now the tricky part is what I.P. -they- may have contributed to the project. If they only laid out the problem, and you solved it, you own the I.P. If they told you in general terms how they wanted to solve the problem, then they will also have some I.P. rights since you wouldn't have made this system without their input. And of course that leaves the issue of whether there is a market for your I.P. outside of this company. If there is going to be significant money to be made, I strongly suggest you get a legal opinion from from a lawyer who SPECIALIZES in I.P. issues. Most lawyers -think- they know about I.P., when in reality it can be a VERY tricky mine field. Been there, have the shrapnel to prove it... NEVER assume that you own your own I.P. unless it's down in writing. Companies generally have MUCH deeper pockets than you do, and they can litigate for far longer than you can. By way of example, a local inventor patented a process for remotely sending a fax via a mobile phone (back before cellular existed). Telus, (our local phone company) has been infringing this patent for decades, and has been fighting this small inventor and his infringement suit for decades now. He should eventually win (I've read his patent, and his claims are sound) but he'll be dead/bankrupt before he gets a dime out of Telus. As Don Lancaster of Popular Electronics has written MANY times, "Patents are only of value if you have the money to defend them". Most inventors don't have the resources to defend them, so there is little point in dishing out $$$ to get a patent (unless you know you can sell the idea to someone else whom has the deep pockets). Robert IANAL, but having been around the block with them, I've learned a few painful things. Jinx wrote: {Quote hidden}> > > At present I hold all the design material (source code, layouts) with > > me, they have no copies. > > > > So, question is.. Who actually owns the designs? > > My understanding (e-lawyers notwithstanding) is that you hold the > authorship copyright unless you explicitly sell or relinquish it to the > customer. They would not appear to be in a very strong position. > and you should be able to ***diplomatically *** threaten to with-hold > services until they get up to date with payments (eg what would > anyone do if their employer not paid their salary ? Strike ! that's > what). Claim you have expenses that need taking care of, mouths > to feed, whatever. Antagonising them is probably best avoided, > however tempting > > A grey area could be intellectual contrbutions to the product > > Points such as - > > Who's idea was it ? > Is it unique / patentable ? > Did you enhance the original idea ? > What are the possible rewards from putting up with a bit of > crap and hanging in there ? > etc etc > > Softly softly catchee monkey. If you feel the need to bale, get the > money first. If you're going to stick around get some paperwork > done ASAP. Some people feel intimidated (pointlessly IMHO) > by written agreements, but I tell you it sorts out who's serious and > who isn't -- http://www.piclist.com hint: The list server can filter out subtopics (like ads or off topics) for you. See http://www.piclist.com/#topics

On Thu, 17 Jul 2003 07:09:19 -0600, Micro Eng wrote: > In the states, you have up to a year to file a patent for a product that has > been released to the public domain. Of course, generally you file before > you release it. For foreign patents, I believe you can't apply once its > been released. Yes, in Britain the rule is: "Don't tell anyone about it until you have the Patent" because once it's public, it's not patentable! Also, you can't patent an idea, only an object. So if you have the idea to make left-handed screwdrivers, only the design(s) you submit is covered by the patent, not *any* left-handed screwdriver that anyone else may make to a different design. > And if multiple applications are filed, first one in wins. Absolutely! Cheers, Howard Winter St.Albans, England -- http://www.piclist.com hint: The list server can filter out subtopics (like ads or off topics) for you. See http://www.piclist.com/#topics

Visit Don Lancaster's website at http://www.tinaja.com to get the low-down on all the reason's patents are for suckers. Mike H. {Quote hidden}> > In the states, you have up to a year to file a patent for a product that > > has been released to the public domain. Of course, generally you file > > before you release it. For foreign patents, I believe you can't apply > > once its been released. And if multiple applications are filed, first > > one in wins. > >And, due to the bright minds that devised the patent system, "not >mentioning an inventor on a patent claim does not invalidate the claim", >so someone else (your previous associate) can simply patent it over your >head while that year is going by. Legally. Ianal, so please correct me if >I am wrong. > >Peter _________________________________________________________________ MSN 8 helps eliminate e-mail viruses. Get 2 months FREE*. http://join.msn.com/?page=features/virus -- http://www.piclist.com#nomail Going offline? Don't AutoReply us! email .....listservKILLspam@spam@mitvma.mit.edu with SET PICList DIGEST in the body

Mike Hord wrote: > > Visit Don Lancaster's website at http://www.tinaja.com to get the low-down > on all the reason's patents are for suckers. He doesn't exactly say that. http://www.tinaja.com/glib/casagpat.pdf "...nearly any involvement whatsoever with the patent system in any way, shape, or form, is virtually guaranteed to cause you a monumental long term loss of time, money, and sanity. ... All a patent does is give you the right to sue someone in a civil action. At some future date in a ridiculously costly, extremely drawn out and easily circumvented legal process. Nobody has ever "won" any patent litigation. The main purpose of patent fights are to cause more grief and harm to the opposition than you are causing yourself. Almost always, this purpose fails miserably. {RR:this is not quite true. No SMALL entity has ever won a patent battle} .... Third, publish all your key secrets and ideas in a major magazine, leaving out no detail, and omitting no insider secrets. This immediately can generate positive cash flow for you and safely tucks all your ideas away in the public domain, preventing most others from attempting to patent them. This also will expose your new ideas to the widest possible audience. ... Finally, be realistic. You don't create things to get filthy rich. You create things because you like to create things and have some compelling desire or need to do so. As long as there are enough nickels to keep going, that is all that should really matter. " E.G. Patents are for masochists... IMO, the only reason to get a patent is that you usually need one to get venture capital. No money barron is going to invest in an idea that they can't protect. E.G. create a monopoly in. R {Quote hidden}> Mike H. > > > > In the states, you have up to a year to file a patent for a product that > > > has been released to the public domain. Of course, generally you file > > > before you release it. For foreign patents, I believe you can't apply > > > once its been released. And if multiple applications are filed, first > > > one in wins. > > > >And, due to the bright minds that devised the patent system, "not > >mentioning an inventor on a patent claim does not invalidate the claim", > >so someone else (your previous associate) can simply patent it over your > >head while that year is going by. Legally. Ianal, so please correct me if > >I am wrong. > > > >Peter > > _________________________________________________________________ > MSN 8 helps eliminate e-mail viruses. Get 2 months FREE*. > http://join.msn.com/?page=features/virus > > -- > http://www.piclist.com#nomail Going offline? Don't AutoReply us! > email listservKILLspammitvma.mit.edu with SET PICList DIGEST in the body -- http://www.piclist.com#nomail Going offline? Don't AutoReply us! email .....listservKILLspam.....mitvma.mit.edu with SET PICList DIGEST in the body

I've made a lot of money out of patents, pity it wasn't me who got it! ----- Original Message ----- From: "Mike Hord" <EraseMEgaidinmdspam_OUTTakeThisOuTHOTMAIL.COM> To: <PICLISTspam_OUTMITVMA.MIT.EDU> Sent: Saturday, July 19, 2003 10:15 PM Subject: Re: [OT]: Intellectual property right - who owns them? > Visit Don Lancaster's website at http://www.tinaja.com to get the low-down > on all the reason's patents are for suckers. > > Mike H. > > > > In the states, you have up to a year to file a patent for a product that {Quote hidden}> > > has been released to the public domain. Of course, generally you file > > > before you release it. For foreign patents, I believe you can't apply > > > once its been released. And if multiple applications are filed, first > > > one in wins. > > > >And, due to the bright minds that devised the patent system, "not > >mentioning an inventor on a patent claim does not invalidate the claim", > >so someone else (your previous associate) can simply patent it over your > >head while that year is going by. Legally. Ianal, so please correct me if > >I am wrong. > > > >Peter > > _________________________________________________________________ > MSN 8 helps eliminate e-mail viruses. Get 2 months FREE*. > http://join.msn.com/?page=features/virus > > -- > http://www.piclist.com#nomail Going offline? Don't AutoReply us! > email @spam@listservKILLspammitvma.mit.edu with SET PICList DIGEST in the body > -- http://www.piclist.com hint: To leave the PICList KILLspampiclist-unsubscribe-requestKILLspammitvma.mit.edu>

Wagner Lipnharski wrote: > "If I have a good idea, or developped a good product, I think I need to > have it patented. Read the Lancaster article to see why this is very BAD assumption. http://www.tinaja.com/glib/casagpat.pdf > But, how much would it cost? Way more money than it's worth. A good preliminary search (prior art) and first draft is upwards of $10k. > can I do it by myself or do I need to hire a lawyer? You can do the preliminary searchs for prior art using the web (uspto.gov, European Patent and Trademark office, etc.). You will probably need a lawyer to draft the patent claim, and you will ABSOLUTELY require a lawyer to file it (in the USA only registered patent agents can file patents AFAICR). > Where can I get information about the necessary steps?" The USPTO site has some information. There are many web sites. And too many 'helpful' companies only too willing to take your money to 'help' you get a useless patent. In the end, your best advice will come from paying a lawyer $150/hr to tell you that you shouldn't be doing it unless you have a LOT of money at hand, and at risk. > Does anybody in here made some patents lately in US? and can help to answer > those questions? Yeah, we just did, and it cost upwards of $70,000 by the time we were able to license the rights to a big name company who spent another $4 million getting it to market. My boss has two other patents that he spend 10's of thousands getting, and for which he will NEVER see a dime recovered. Unless you have a MINIMUM of $100,000 for I.P. rights, just build the damn thing and publish the details so no one else can get a patent on it. Or take the 'trade secrets' route and make sure only -you- know the crucial details for making it all work. > I myself, have necessity to walk this patent trail sooner or later, > posponing just by lack of knowledge. > In the past I contacted a patent lawyer company, their cost were so high > ($10 thousand) that I forgot about the idea immediately. And that was just to START. You then need very deep pockets if you want to defend your patent. And if you -don't- actively defend it, the courts will rule that you have abandoned it, making claims harder to enforce at a later time. As I said before (and has been pointed out by other experts in other forums), patents are only of value if you have the money and time to defend them. Robert IANAL but you can't help but learn things when you got through the excruciating process of getting a patent. -- http://www.piclist.com hint: To leave the PICList spamBeGonepiclist-unsubscribe-requestspamBeGonemitvma.mit.edu>

>Unless you have a MINIMUM of $100,000 for I.P. rights, just build the >damn thing and publish the details so no one else can get a patent on it. >Or take the 'trade secrets' route and make sure only -you- know the >crucial details for making it all work. Even this is not a sure-fire method. Not long ago, a thread was about discussing means for reverse engineering a design. The general consensus was that NO method for stopping reverse engineering is fool-proof,and that if a large company wanted to reverse engineer any design, it could. I just had a case here where someone was paid to deliver a design to us, and decided that he would be better served by delivering a prototype with the part numbers filed off and then holding out and insisting on charging us more than originally agreed upon to either A:> produce units for us or B:> turn over the info. It took all of ten minutes to find the missing part numbers. Mike H. _________________________________________________________________ Add photos to your messages with MSN 8. Get 2 months FREE*. http://join.msn.com/?page=features/featuredemail -- http://www.piclist.com hint: PICList Posts must start with ONE topic: [PIC]:,[SX]:,[AVR]: ->uP ONLY! [EE]:,[OT]: ->Other [BUY]:,[AD]: ->Ads

> I just had a case here where someone was paid to deliver a design to > us, and decided that he would be better served by delivering a > prototype with the part numbers filed off and then holding out and > insisting on charging us more than originally agreed upon to either > A:> produce units for us or > B:> turn over the info. > It took all of ten minutes to find the missing part numbers. Interesting that - as an example - arcade machine boards are reverse-engineered by people with no special electronic tools, just by analyzing the software. And worse - people with special tools (good logic analyzers, etc) can reverse engineer not only the circuit of an arcade board (have anyone here seen one? Big, full of 168-odd pin chips and 4 to 8 layers) but also create a **compatible one**. Note I didn't said copy it bit by bit. But reverse engineer and indeed MAKE IT BETTER!!! Gosh! The best way to enforce IP security, is to have a cheap price and full info avaiable. It makes you "nice" for the one that buy, and "nice" for the one who wants to copy. When I get the schematic of the Amiga 2000, I don't want to copy one for me, but surely I want to understand how things works. It improve my knowledge on electronics, and maybe bring it back to Commodore creating something that forces people to buy their product (anyone heard about the Amiga Video Toaster?). This is my **oppinion** and may be right of wrong in your eyes. Your milegage may vary. Void where prohibited. Batteries not incluided. :o) --- Checked by AVG anti-virus system (http://www.grisoft.com). Version: 6.0.501 / Virus Database: 299 - Release Date: 14/07/03 -- http://www.piclist.com hint: PICList Posts must start with ONE topic: [PIC]:,[SX]:,[AVR]: ->uP ONLY! [EE]:,[OT]: ->Other [BUY]:,[AD]: ->Ads

> > "If I have a good idea, or developped a good product, I think I need to > > have it patented. > >Read the Lancaster article to see why this is very BAD assumption. >http://www.tinaja.com/glib/casagpat.pdf He's a tech writer without legal background. Take that article with a grain of salt. > > But, how much would it cost? > >Way more money than it's worth. A good preliminary search (prior art) >and first draft is upwards of $10k. Or free with some time spent. > > can I do it by myself or do I need to hire a lawyer? > >You can do the preliminary searchs for prior art using the web >(uspto.gov, European Patent and Trademark office, etc.). >You will probably need a lawyer to draft the patent claim, and you >will ABSOLUTELY require a lawyer to file it (in the USA only registered >patent agents can file patents AFAICR). You can do it completely yourself without any legal intervention from beginning to end. The USPTO actually favours individuals and small companies with price breaks and unofficially treats you a bit better. > > Where can I get information about the necessary steps?" > >The USPTO site has some information. There are many web sites. >And too many 'helpful' companies only too willing to take your money to >'help' you get a useless patent. The best book is called "Patent it yourself". You can find copies used on ebay for about $20. >In the end, your best advice will come from paying a lawyer $150/hr >to tell you that you shouldn't be doing it unless you have a LOT of >money at hand, and at risk. We paid $485 an hour for one to check over our patent application and were told we had done as good a job as he could have. Bugger didn't even feel guilty about billing us later though. > > Does anybody in here made some patents lately in US? and can help to answer > > those questions? > >Yeah, we just did, and it cost upwards of $70,000 by the time we were able >to license the rights to a big name company who spent another $4 million >getting it to market. My boss has two other patents that he spend 10's >of thousands getting, and for which he will NEVER see a dime recovered. Yes I've filed 3 this year and just paid the basic fees. Dave -- http://www.piclist.com hint: PICList Posts must start with ONE topic: [PIC]:,[SX]:,[AVR]: ->uP ONLY! [EE]:,[OT]: ->Other [BUY]:,[AD]: ->Ads

I've gone through it in the US and in France. May I make two points? First: In the US the rights belong to the inventor -- the person who can show by notes, prototype or whatever that they originated it first. This is written into the United States Constitution. In Europe it is a "race to the courthouse" -- whoever files first owns the patent. So many years after a patent is issued the "true" inventor can overthrow a US patent by showing sufficient proof that they invented first. In Europe the patent is much more absolute. I guess it's a fairness vs. finality issue. Second: In the US a good lawyer can get a patent on just about anything -- if you have enough money. Patents can be written narrowly (circuit works on 2.5 to 2.7 volts and uses these three components) or broadly ( novel circuit design strategy allows low supply voltages). As a rule, narrow patents are worthless except as marketing claims. IMHO you should take a cynical look at your "invention" before going to a lawyer: 1) What is "invention" and what is merely applying current technology (a refinement)? Is there enough "invention" to convince a cynical and informed examiner? 2) How hard would it be to circumvent your "invention?" If the same task could be accomplished another way, the value of the patent is only the difference in cost of the alternate approach. 3) Can you afford to defend the patent? In the US a patent gives you the right to take someone to court and it gives you the rebuttable presumption that you indeed are the inventor. That's it. It does not pay for your lawyer, investigators, depositions, court reporters, experts, and lost sleep. [There is a company in Redmond Washington USA which is notorious for daring patent holders to sue when they infringe. In most cases the patent holder settles for the actual development cost and lawyer's fees when the patent holder runs out of money to defend the patent. It's a bit like "buying the pot" in poker, far cheaper than in-house R&D, and perfectly lega l.] Win Wiencke {Original Message removed}

>Or take the 'trade secrets' route and make sure only -you- know the >crucial details for making it all work. Maybe this works for a while. If one would have a rapidly evolving product range then one could use this, and release everything by publishing it a short while afterwards (say a year or two after the new product appears), in trade magazines and such, but maintaining commercial rights on the design. Then any copycats could not be commercial copycats, it would only be of interest to hobbyists and one-offers who would not really compete (this assumes that the original design is complex and was sold in large numbers). Unfortunately this does not work for small developers for whom every sold unit counts. Peter -- http://www.piclist.com hint: The list server can filter out subtopics (like ads or off topics) for you. See http://www.piclist.com/#topics