Kenneth Avila, Esq. - Patents, Trademarks, and Business Law
  • Home
  • Meet the Lawyer
  • Practice Areas
    • Business Law
    • Intellectual Property Law >
      • Patent FAQ and Fees
      • Trademark FAQ and Fees
      • Copyright FAQ and Fees
  • Resources
    • Blog
    • IP Twitter Feeds
    • IP Websites
  • Contact Me
  • Disclaimer
Inland Empire - (909) 566-2801
Santa Barbara - (805) 500-6241
Tennessee - (423) 226-8036
​Georgia - (404) 436-0899

Hiring an independent contractor?  You may not be the owner of any intellectual property created by the independent contractor.

8/27/2017

1 Comment

 
Picture
Basically a business may hire two types of individuals.  These two types of individuals are employees and independent contractors.  If you hire an employee here in California, the law favors the employer being the owner of any intellectual property created by the employee, even intellectual property created by the employee while "off the clock" as long as it is related to the work the employee is performing for their employer.  However if an employee signs an intellectual property agreement with their employer then the intellectual property agreement will prevail.  If you are an engineer or computer programmer, in most cases, when hired you were asked to sign an agreement whereby you agree to release to your employer all intellectual property that was created during the period of your employment.  Refusing the sign the agreement will likely not grant you any intellectual property rights as by law you are required to turn over your intellectual property to your employer.  However, if you sign an intellectual property agreement that states you may keep any intellectual property you develop during the period of your employment then the agreement will prevail against the law and you will retain your rights to IP that you create.  This situation is, for the most part, reversed when it comes to independent contractors.  Unless the independent contractors signs an agreement to turn over any intellectual property that is created in the course of working for the company the independent contractors retains all rights to the created intellectual property.  There are exceptions to these general rules and you should talk with an attorney to get an answer for your specific case but what sets an independent contractor apart from an employee?  

The Internal Revenue Service (IRS) states that "The general rule is that an individual is an independent contractor if the payer has the right to control or direct only the result of the work and not what will be done and how it will be done."  Here the word "payer" is the company that is paying the individual doing the work.  The IRS also provides the following details:

  1. Behavioral: Does the company control or have the right to control what the worker does and how the worker does his or her job?
  2. Financial: Are the business aspects of the worker’s job controlled by the payer? (these include things like how worker is paid, whether expenses are reimbursed, who provides tools/supplies, etc.)
  3. Type of Relationship: Are there written contracts or employee type benefits (i.e. pension plan, insurance, vacation pay, etc.)? Will the relationship continue and is the work performed a key aspect of the business?
Picture
You may get more information from the IRS about independent contractors by clicking here.

If you have hired someone that fits the IRS rules for an independent contractor then very likely that individual is an independent contractor and they will generally own any intellectual property that they create unless they sign an agreement giving you rights to their intellectual property.  So be careful and when in doubt have your new person sign an intellectual property agreement to transfer those rights to you.  If you need help contact me and I can draft that agreement for you.​

If you have hired someone that fits the IRS rules for an independent contractor then very likely that individual is an independent contractor and they will generally own any intellectual property that they create unless they sign an agreement giving you rights to their intellectual property.  So be careful and when in doubt have your new person sign an intellectual property agreement to transfer those rights to you.  If you need help contact me and I can draft that agreement for you.
1 Comment

Important Considerations for a License Agreement

8/21/2017

0 Comments

 
Picture
There are many considerations to take into account when licensing your intellectual property.  Adding to the complexity of the agreement is that each type of intellectual property, whether it be patents, trademarks, or copyrights, have different concerns and problems that you need to pay attention to.  For example with trademarks you will want to pay attention as to how your mark will be treated by the licensee.  How will they be displaying your mark?  What sort of training will they provide their employees?  However here are some general guidelines for you to consider when licensing your intellectual property.
  • Don't download and reuse a license agreement you found on the internet.  Although such an agreement may look great and cover everything it is not the agreement for you.  Each license has special needs and many factors to consider.  Reusing an existing license agreement and just changing the names will very likely cause you lots of heartache and worse a loss of rights.
  • Remember that in a licensing agreement you are giving someone the right to infringe on your intellectual property.  Make sure that in the terms of the agreement that the licensee will use the same level of care as you would use to protect your intellectual property.
  • Pay special attention to the terms in the agreement related to royalties, termination, confidentiality, and transferability.  Many times problems in these agreements are in these clauses.  Review them carefully and run them through as many scenarios as possible to find possible problems and weak points.
  • Many times when licensing one intellectual property you may be also licensing another.  For example, say that you are licensing a patent to a formula for paint and the agreement is to transfer the rights to the formula to a distributor so they may bring the paint to market.  What may also need to be transferred is any know how or trade secret as to the manufacture of the paint and it needs to be included in the agreement.
  • Consider who is to retain the rights to any improvements or derivatives in the intellectual property.  Say the intellectual property is a musical score and the licensee has modified the musical score.  Who owns the rights to the newly modified musical score?  What royalties will you, the licensor, have to the new musical score?
  • Success in these five areas will enable both you and your licensee to focus on what is really important about the agreement - allowing both of you to profit financially from the agreement.



  • 0 Comments

      Categories

      All
      Agreements
      Arbitrary Trademarks
      Artificial Intelligence
      Business
      China
      Common-Law Rights
      Contracts
      Conversion
      Copyrights
      Corporations
      Counterfeit
      Counterfeiters
      Courses
      Defamation
      Descriptive Trademarks
      Design Patents
      Employee
      Employer
      Excusable Nonuse
      Fanciful Trademarks
      Federal Rights
      Foreign Filing
      FTC
      Generic Trademarks
      Hashtags
      Incontestable Trademark
      Independent Contractors
      Infringement Searches
      Injunction
      INTA
      Intellectual Property
      Invention Promotion Firms
      Inventors
      Latches
      License
      License Agreements
      LLC
      OECD
      Patentability Searches
      Patents
      Patent Searching
      Plant Patents
      Principle Register
      Roundtable
      Scams
      Software
      State Rights
      Suggestive Trademarks
      Supplemental Register
      Trade Libel
      Trademarks
      Trade Secrets
      UCC
      Unclean Hands
      Unfair Competition
      USA
      USPTO
      Utility Patents
      Videos
      Website
      WIPO

    Picture

    Copyright © 2011 - 2022 by Making Innovation Count PLLC. Notice: The information presented on this website is for general informational purposes only, and should not be relied upon as legal advice. No attorney-client relationship is created between you and Making Innovation Count PLLC simply by your use of this website.
      Redlands: 1255 West Colton Ave., CA 92374 
    ​Ontario:  3281 E Guasti Rd., CA 91761
    Tennessee:  
    651 E. 4th Street, TN 37403
    Georgia:  260 Peachtree Street North West, Atlanta
    Santa Barbara: 351 Paseo Nuevo, CA 93101


    Note that these offices are virtual and only for the purpose of meeting with client who have previously made an appointment.
    • Home
    • Meet the Lawyer
    • Practice Areas
      • Business Law
      • Intellectual Property Law >
        • Patent FAQ and Fees
        • Trademark FAQ and Fees
        • Copyright FAQ and Fees
    • Resources
      • Blog
      • IP Twitter Feeds
      • IP Websites
    • Contact Me
    • Disclaimer