In this final part of our series of articles on ownership, we consider ownership of IP created by employees of third parties from whom it has been commissioned or to whom work has been outsourced. Generally, such IP is owned by the creator, absent a contract that provides otherwise. An agreement that addresses ownership issues is therefore essential to reduce the chance of a dispute or an unwelcome surprise.
First, we consider how a properly drafted agreement can help avoid problems involving IP resulting from outsourcing of fabrication and/or assembly to a third party. Then, we consider ownership of IP resulting when a third party is commissioned to develop and/or design or improve a product or process. We note the similarity to outsourcing situations, and also look at some issues that arise specifically in the context of work subject to copyright protection, especially software.
Finally, we consider issues related to collaboration agreements. We begin with a look at the rights of joint inventors or joint authors. Problems can easily arise because the laws almost everywhere allow separate exploitation of such rights. Ways to avoid such problems are discussed.
In the context of joint ownership and separate exploitation, we consider agreements under which employees of two separate organizations will work together on a project and such agreements between an individual and an organization. We emphasize the importance of carefully drafted collaboration agreement. We also discuss some problem areas in connection with joint inventors and joint authors who work for different ones of the collaborating parties.