From: PENQUAKR74@aol.com
Date: Sat Jun 08 2002 - 23:29:05 EEST
You are right software and design rights are a tricky business. When you
contract with a design house to make a design or you contract a manufacturer
to make a part or when you contract with a programmer to write code, it is
necessary to explicitly state in the PO or contract that the final product
and the drawings are deliverables and are products of work for hire.
Otherwise the product design and drawings or the software developed belongs
to the contractor, not to you. The most famous case where not writing the
phrase "Work for hire..." in a PO involved an invention worth $300 million,
polymerase chain reaction or PCR. Kerry Mullis, then at Cetus and the
inventor, wrote a purchase order to Perkin Elmer to design and make a
thermocycler to his specs. Perkin Elmer delivered the device, but refused to
deliver the drawings, claiming ownership of the design and the machine. As a
result, Cetus had to grant Perkin Elmer an exclusive right to use PCR for
non-clinical applications in exchange for certain restrictions on the use of
the thermocycler.
On the software side, in the 1970s and early 80s, many Silicon Valley
companies learned the hard way that by hiring a software programmer to
develop applications or write code, the ownership resided with the creator,
the programmer, not with the company. Several companies found that they
could use their products and in one case could not modify its application
without the express written permission of the contracted programmer they paid
to write the code. This is because software is usually protected by
copyright which inures to the benefit of the creator.
Scott Taper
iplicensingconsultants.net
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