IP transfer question

You seem to have misunderstood both me and my question. I apologize if that misunderstanding was due to a lack of clarity on my part.

But I confess, I do not see what part of my question was unclear. Are you under the impression that contracts are bad? Or that licensing another's designs is bad? Or that evolving someone else's design is bad? Or that asking opinions is bad?

If I may clarify:

I know a fellow who, after an illustrious career as an engineer himself, is retiring. I am considering taking over the manufacture of some of his products. Admittedly I could simply have designed competing products myself; but I have always felt that if a good product is on the market at a reasonable price, I would be serving the public and the industry better to focus my efforts elsewhere. So, I waited until an opportunity came up to license his products.

That opportunity has arisen, and I am trying to pursue it. I am happy to pay him a fair royalty. However, I want to be fair to both of us; and so I want to write a contract that deprives neither of us of our due. He should be entitled to royalties on his design; I should be entitled to ownership of my own designs, and to my improvements on his design.

This is a common situation, and a common problem. I am simply wondering what the customary solution to it is. I could pay an IP lawyer a large amount of money to get a single opinion, which I might or might not trust; but thankfully I also have this forum as a recourse, where there are many skilled engineers who have probably encountered this problem at one time or another and who are willing to share their opinion.

IANAL, but I understand they make huge amounts of money for answering such questions, and even more once one party contacts another with a claim of infringement.

What's the best law school in the Atlanta area?

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This is sci.electronics.design.

Here, people give of their time and experience in the furtherance of the spread electronic design knowledge to those with a genuine interest in electronics (rather than freeloaders who just want a shortcut).

Your question, which is more about restricting the freedoms of others, is liable to get short shrift from the commies on this group (I count myself among them) - but doubtless there will be a few who sympathise with you.

If you have to ask a question like this, then my advice would be that you do it elsewhere.

I read in sci.electronics.design that Walter Harley wrote (in ) about 'IP transfer question', on Sat, 2 Apr 2005:

Write in your contract that his rights (carefully enumerated and described in excruciating detail in a schedule to the contract) expire after n years (n to be agreed, maybe 5 or 10 depending on their nature) unless extended by agreement at that time. In the event of failure to agree, the matter shall be put to binding arbitration under an arbitrator appointed by an independent third party, such as the President of the IEEE.

You can vary this a bit to suit your particular case, without violating the principles. You should check that such terms in a contract are allowed by US law.

You sure as hell sound more and more like Larry Brasfield each time you post, chickensh_t pseudo-intellectual and pseudo-sophisticated scum of the earth , coward , liar, and thief. Why don't you go FY, phony- your kind is not wanted around here- you are a trouble making maggot and every thread you enter will be disrupted- whether you have it killfiled or not- Google and every other archive will show you as exposed for the low life scum that you are. First you take a stab at impersonating an engineer- now you want a shortcut to impersonating a lawyer. What's the matter, big shot, don't have much cash on hand? Geez, wonder why that could be...

In the scheme of things, there is a place for all creatures, even the vultures that wait for the opportunity to pick over the carcasses of those weakened by age.

"Fred Bloggs" wrote in message news: snipped-for-privacy@nospam.com...

Washington-

"Incredibly" is the operative term here. A quick look at Walter's post headers, then an inferrable website,

For those unfamiliar with local geography here, Seattle and Mercer Island are disjoint areas.

nothing parasite riffraff garbage people...Hey,

A lot of electronic development happens around here, at the hands of people enjoying the normal range of competence. Fred's delusion to the contrary denotes nothing beyond his own sickness of spirit.

learn aspects of its design which I may then,

that it is no longer recognizably derivative.

in contracts?

from me just tweaking his design, calling it my own,

me from him claiming that any vaguely-related product

I have a lawyer. I'm trying to gain additional points of view.

Someone who acts as his own lawyer does indeed have a fool for a client. But someone who assumes that his lawyer (or other professional) knows everything there is to know, isn't doing due diligence. If I were sick, I'd look up the side effects of the medicine my doctor prescribed. If my pipes were leaking, I'd get a bid from more than one plumber.

All I'm trying to do is learn more about the customary, fair solutions to a common engineering business situation. My interest is in forming an agreement that will be a win for both parties and will not blow up in our faces later on. A contract based on a bad agreement is a liability, not an asset. To have a good contract, you need to have a sensible, fair agreement, based on clarity, shared values, and practical experience.

It seems reasonable to ask what agreements folks here have used in this situation. There is a range of solutions, some with hidden gotchas that I would like to avoid. Asking for the experience of others seems a good way to do that, if they are willing to share those experiences.

Jim (or others), in your experiences with IP licensing, what was your solution to the problem of defining when royalties are no longer due? (Thanks, John W., for your answer.)

On Sat, 2 Apr 2005 21:45:04 -0800, "Walter Harley" wroth:

That's your major problem. Just because you're a smart engineer, it doesn't follow that you are qualified to write a contract.

Someone who acts as his own lawyer has a fool for a client. That's a trite saying, but like many, is true.

Find one lawyer that both you and the other guy can trust, split the fees, and sit down with him so both of you can explain what you want the contract to cover and not cover. If the two of you can't work that out, then no contract, even one *you* write, will be worth the paper it's written on.

Jim

"Walter Harley" wrote in message news: snipped-for-privacy@speakeasy.net...

There was no evidence in your original post that you intended to act as your own lawyer. Mr. Meyer's reproach was both premature and irrelevant to the clear questions you raised.

someone who assumes that his lawyer (or other

If I were sick, I'd look up the side effects of the

more than one plumber.

A point missed by the "Let the lawyer(s) do it" crowd is that the lawyer's charter is to effect the intentions of the parties in a legally enforcable way. A good lawyer may advise clients as to terms that should be present, but it is ultimately up to the parties to determine what their agreement achieves. That job cannot be simply handed over to some lawyer(s).

I see in your original post only questions relating to your proper role in creating an agreement with the *assistance* of a lawyer.

common engineering business situation. My interest is

up in our faces later on. A contract based on a bad

have a sensible, fair agreement, based on clarity,

situation. There is a range of solutions, some with

others seems a good way to do that, if they are willing

I will share some of mine which serve to illustrate why your approach to contract terms is a good idea.

Once, I was invited to work for a large corporation which had an IP protection and assignment agreement obviously written by one or more lawyers with no evident intention of being fair. (If executed), it claimed rights that went far beyond what anybody would consider fair under ordinary circumstances. It so happened that I had some IP of my own, developed before I ever talked to that corporation, which I would be giving away all rights to if I signed their agreement. Because I thought that IP was valuable, and had other employment options, I insisted their agreement would have to be ammended before I could sign it. Getting that perfectly reasonable change effected took more time on the part of their lawyer(s) and delayed my start date by a week or more. What was funny about the affair was that the guy hiring me understood how unreasonable those terms were and never gave me the slightest criticism for not being willing to sign under the circumstances.

On the other side of such problems, I have always been favorably impressed when I encounter agreements that are clealy intended to be fair and not exploit the fact that many employees sign paper without really reading it.

Thanks. I don't see Fred's posts, myself; although he often has good information, I found the level of vitriol higher than I was willing to pay attention to, so he's in my blocked senders list.

The very same. Feel free to visit or call.

You're a worthless p.o.s. and fraud- please drop dead at your earliest convenience.

That's a crock of manure- guess you have no understanding of the concept of fiduciary responsibility. So you continue to shoot your mouth on subjects about which you know zilch..

I read in sci.electronics.design that Walter Harley wrote (in ) about 'IP transfer question', on Sun, 3 Apr 2005:

Absolutely. Part of the reputation that lawyers have for creating chaos is due to people not telling them all the facts. I've experienced some of this when acting as an expert witness. You get a brief from the lawyer and send back around 20 key questions that the brief simply doesn't address.

On Sun, 3 Apr 2005 13:44:15 -0700, "Larry Brasfield" wroth:

Walter said, "I want to write a contract..." That was what I was replying to.

My original reply also included this, which you might have missed...

Find one lawyer that both you and the other guy can trust, split the fees, and sit down with him so both of you can explain what you want the contract to cover and not cover. If the two of you can't work that out, then no contract, even one *you* write, will be worth the paper it's written on.

Jim "not premature, but full term" Meyer

no

Given that information, (which I did not see), my comments were too strongly stated. It appears that you and I agree on at least one useful role for a lawyer. (I have taken the exact approach you suggest with one lawyer. After he gave the obligatory spiel about representing competing interests, he went ahead and did exactly what we (the parties) wanted.)

Please accept my apology for any offense.

On Sat, 02 Apr 2005 21:45:04 -0800, Walter Harley wrote: ...

I don't know if it's "customary," but the logical thing to do is to sit down with your client, and talk and take notes until you have something that you're both happy with.

Then have a lawyer look over it for legalities, but if you've written your agreement in plain English, using declarative sentences, and spelling out in excruciating detail exactly what's protected, and a paragraph about derivative works, you should be covered. If you've got proprietary information in the contract, then declare the contract itself to be covered under the same intellectual property agreement.

Look up "non-disclosure agreement".

The secret to a contract is that it's balanced - both people are satisfied with the deal, and both agree on what should happen if something goes wrong.

Good Luck! Rich

I read in sci.electronics.design that Rich Grise wrote (in ) about 'IP transfer question', on Mon, 4 Apr 2005:

I tried that; I can't see it because it seems to be covered by an 'NDA', whatever that is.