What elements do people put into non-disclosure agreements to protect their own IP?
I'm assuming that first, it has to be stated that potentially all material provided may contain proprietary information, whether marked as such or not. I'd hate to have to mark all emails as proprietary. Even my schematics, while marked with copyright, are not marked proprietary.
Second, it needs to be stated that the recipient acknowledges the above and will treat the material as such.
Third... well, I can't think of anything else, other than perhaps that any disclosures to others is permitted only with specific written permission? Which would seem obvious given the nature of proprietary information.
Any essential elements I'm missing? Should there be specific penalties? I would hate to have to prove a monetary loss from an infraction. What is customary in regards to that?
One other thought. I'm a bit unclear about copyright. My schematics are marked with dates of the two times they were created and updated. Since then comments have been added, which were not through the schematic software, so those dates were not updated. Is it important to add the year various notes were added in a PDF editor?
You get a lawyer who understands relevant IP to draft an agreement for you. That way there is a fair chance that it will be enforceable if needs be. Rules vary with national boundaries so where you are matters.
You can also watermark code, documents or drawings in such a way that copies can be demonstrated to have been plagiarised from your work.
Trade secrets are the other way of protecting some key IP.
Places that care have a boilerplate that goes after their signature to the effect that the content is proprietary and confidential and to delete it if you are not the intended recipient (I'm not convinced that last clause does much good). If its juicy enough gossip it will escape!
Please find attached plans for my free energy machine...
Signed agreement from someone senior enough in their organisation.
We tended to tack additional years on separated by commas. I have no idea if that is correct or not. Never ever had to try and enforce ours - but it looked intimidating enough that nobody ever tried it on.
Turns out I misunderstood the inquiry. They are asking who owns the design. I was paid for the design effort, but with only a rather loose spec, nothing documented in the traditional sense. I had to research much of the design requirements on my own. Since then, there have been minor changes that were researched and funded my me. Much of my efforts since the original design effort have been for fabrication and testing.
I've always expected they felt they owned the design, but they (being a large corporation) have lost any design info I provided at the time, as well as any contractual info. Sounds like the design is mine. I'm pretty sure no one in the company is going to contest me if I claim ownership.
That depends. If the thing makes enough money then their legal department will eventually take an interest in it and sue.
If it stays under their radar then it may not be cost effective for them to pursue it. They will probably leave it until you have made a fairly handsome profit and then move in with an IP claim against you with punitive damages. Then it gets expensive, time consuming and they have nearly bottomless pockets and in house lawyers.
ISTR that is how it works in the USA - I found it distasteful.
Some organisations have bull in a china shop mentality to IP.
Microsoft (US software giant) vs UK M&S (retail chain) Microsoft tights. (can't immediately find an online link - too far back)
Google search blinded by the Cuthbert the caterpillar trademark dispute.
Microsoft vs Google ended in trench warfare and a pseudo draw:
formatting link
Most recently Vogue glossy airhead magazine vs UK Cornwall pub:
It also depends (a lot!) on what sort of contract or agreement you signed when you agreed to develop it. IANAL so here's my layman's understanding of the usual situation.
On the one hand: if you signed a "work for hire" contract then they own the rights to all novel work that you did on the job. You were their employer, your pay was the compensation for your work, and you don't retain any residual rights to the novel work in the design.
Even under a "work for hire" contact, the employer doesn't gain the rights to any pre-existing technology that you used in the work. If it's "out there" in public, if it's technology that a skilled worker in your trade has access to, then you're free to use it for further _new_ designs.
It sounds as if the situation in your case is more complicated, since you did the original work "on their dime". They'd own the results to the initial version you turned over to them (even if you had to do a whole bunch of the design-requirement research... in effect that's part of what they were paying you for). The subsequent versions that they didn't pay you for... you'd own the rights to further, novel improvements (the company wouldn't have the right to use those without your permission) but they'd retain the ownership of the original version.
So, from my location out here in the cheap seats, the answer to the question "Do they own it, or do I own it?" is "Yes". Neither party seems to have clear, exclusive ownership of the current version.
If you decide to make further use of it in the commercial market, you run the risk that they might come around later and sue you. If you were to try to sell your rights to the current version to a manufacturer, they might very well ask you to attest that you own the rights free-and-clear - and if you said "yes" you could eventually end up being sued by both companies :-(
Things could be even worse if the original company should ever be acquired by an "IP troll" company - they make their money chasing down possible violators and hanging them over slow fires until all the money falls out of their pockets.
At this point your best bet is probably to talk to a lawyer with intellectual-property experience. Ask him/her about the specifics of your situation. Ask whether the doctrine of Laches might provide you with some level of defense. It could be in your best interest to write them a formal letter stating that you believe that you own the current design "in the clear", and see what their response is. Maybe even ask straight-up for a copy of any contract or agreement about this IP they have in their possession?
Or, gamble that they (and their successor companies) will never notice and hit you with a "submarine lawsuit".
You might want to try to broker a deal - a mutual release. You grant them the right to use your improved design, in perpetuity, for no additional royalty, and they grant you the same right. Companies having conflicting or ambiguous IP claims will often do this sort of cross-licensing as a way of letting engineers get their jobs done without undue lawyer-squabbling.
If "cash" accumulates? Where would this cash be accumulating?
One problem is they have never been willing to commit to any level of sales. So I've always had to build to order. This means around 8 or 10 weeks before product can ship even when parts are readily available. So I don't know how they can internally justify spending the money to design a replacement unit and then to ramp up the production and testing capability. Heck, they have to spend bucks on EMI/EMC testing alone. I could probably respin the board with a different CODEC and a different FPGA and get by without EMC testing... maybe.
I nosed around my records and have not found any evidence of any communications regarding ownership of the design. I'm thinking it would be hard to a company to claim ownership 14 years later after I've been building the design all this time, with no documentation to say the design is not mine. Most importantly, they have not made an indications the design belonged to them. I maintain it. I update it. I take full responsibility for it working.
There is a law in real estate (in most jurisdictions), that if someone uses a piece of property, absent any agreement, for some specific number of years, uncontested by anyone, including the property owner of record, that property can be claimed by the person using it. I think, in the end, that is what we have here. The ownership is perhaps a bit murky, but absent any documentation, and with my company being responsible for all the maintenance, etc., the design belongs to me.
Heck, the company actually lost all the documentation I've provided. If this design were a child, that would be endangerment! LOL
Sue for what exactly??? You are failing to understand large companies. No one in the legal department even knows of the existence of the product, much less the vagueness of the ownership. There is no money anyone is counting to pay attention to!
LOL! I'm selling the device to THEM! There can't be any IP claims.
I snipped the rest of the post as it is entirely irrelevant.
If you sell a lot independently, they're bound to hear about it. There will likely be a 'discussion'. If this client currently supplies a good propotion of your gross income, you may be losing the bird in hand.
If you've bought a new car recently, or crowed about your success in a pub recently, you may get a letter in the mail that initiates a new relationship with your old client.
You are not listening! The product is not sold to anyone but them. It's not useful to anyone but them.
Additionally, for the most part, they don't know I exist. As to the new car thing, when I bought my Tesla four years ago, I showed it to my contact. He was impressed with the speed. I don't believe anyone else in the company knows. We're keeping it a secret. Please don't rat me out! ;)
Actually, I think your comment about the car and the pub are pretty funny. Sometimes it's good to inject levity into a serious conversation.
In that case, it doesn't sound to me as if they have any claim to the design work you did, since they were purchasing only a product. They own the problem and the requirements, but not the specifics of the solution.
On the other hand... if there was no mention at all of ownership of IP in what you sold them (no trade-secret agreements or the like), there may be little or nothing to stop them from having somebody else clone the design and manufacture knockoffs (thus cutting you out of any additional sales to them). I have no idea whether it would be financially worthwhile for them to do so.
So, yeah, a good clear letter summarizing the situation should help. Make it clear that they purchased products built-to-specification, that you were not a work-for-hire employee or contractor, and that you were not asked to convey any IP as part of the sale nor were you compensated for doing so.
Best of luck! You may be running into a bit of the "hell, let's claim the world and see who pushes back" mentality there... it's common enough.
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