2 Replies Latest reply on Feb 12, 2013 3:14 AM by LyndsayHowarth

    Consultancy Agreements - Ownership and Intellectual Property Rights (IPR) ... the continuing story

    itraining

      Thanks to all of the people who responded to my original post:

      https://fmdev.filemaker.com/thread/68833

       

      I have been pursuing the issue and you might be interested in the developments since that point in time.

      Sorry for creating a new discussion. I needed to attach 2 documents but I could not see how to attach PDFs using the Reply interface on my previous post.

       

      Question to be answered:

      "Is it OK for a legal office to create an Agreement form demanding specific behaviour yet refuse to clarify if a suggested (specific) example is in breach of the agreement?"

       

      The story so far:

      Please read the previous post https://fmdev.filemaker.com/thread/68833

       

      22 January 2013: I wrote a document (attached) requesting the Legal Office advise if 4 specific examples of re-using components of a database would be considered "in breach" of the agreement. As you read the document please be aware that "I am Australian" and Australians are known for exhibiting behaviour that is upfront, straightforward and "cuts to the chase". Furthermore, I would place myself at the far right of this behavourial continuum.

       

      12 February 2013: The legal office replied to my liaison, who sent me the relevant responses in an email message. Not sure if the reply was edited to any great extent.

       

      I guess the response from Legal is to be expected. Still I am disappointed they would not comment on the specific examples I provided. Common sense suggests the people who write the agreement should be able to adjudicate and say "Yes" or "No" if a specific example breaches the agreement, or not. Probably every rule, policy and law, ever invented, has evolved out of a real world event that needs to be addressed. This very agreement was probably written by Legal in response to historical infractions against UQ. Personally, I find it bizarre that people can make a rule, demand you follow said rule yet refuse to help clarify the rule, particularly any "fuzzy" areas. Conversely, if I wrote an agreement, I would consider myself to be the best person interpret it, over-and-above the interpretation of outsiders.

       

      So now I am off to investigate something called the GITC.

      From there I will decide if I should sign the agreement or not.

       


      Bye for now.

       

      Michael Richards

      Brisbane (Australia)

        • 1. Re: Consultancy Agreements - Ownership and Intellectual Property Rights (IPR) ... the continuing story
          psijmons

          Michael,

           

          The type of clauses in your original post are worded for exchange of materials such as cell lines, DNA contructs, antibodies, chemicals, pharma compounds etc. This is a standard text that is very common in life- or material sciences. The reason behind it is that inventions are always small steps ahead on other invention's shoulders and by simply exchanging materials in a research environment could block such parties of ever filing a new patent in that area, UNLESS the freedom to operate is granted through such a clause.

           

          When it is really critical, this is followed by a detailed description of the "state of the art" at both signing parties (our software for life science industry generates a timestamped PDF with the highest KeyID's across all tables as a good description of prior art, an appendix to a contract such as yours that sometimes scares the hell out ot the orther party as the definition of prior art can become extremely tricky when it comes to a fight).

           

          Anyway, it is well over the top to use such a clause for a straightforward software development contract and indicates a certain laziness in the legal dept of UQ, they just have one template doc and use it for all purposes. Our starting point was a legal form that we created on quickforms.com where you can go through a decision tree to get a contract that fits your situation for just a few $$.

           

          What may also help is if you have "general terms" in place to which you can refer in a contract and which should be published on your website, submitted at the chambre of commerce or may be printed in a small grey font at the back of every invoice or be an appendix on every work contract you do with your business.

          Feel free to grab this text from http://www.szienz.com/base/company/legal.html and do a find / replace for our company name with yours.

           

          Then, hopefully this was your last encounter with the legal dept of UQ and you deal next with the people who actually need your software. (and I agree with Lindsay, if they are the of same breed, drop them).

           

          Peter

          • 2. Re: Consultancy Agreements - Ownership and Intellectual Property Rights (IPR) ... the continuing story
            LyndsayHowarth

            wow!

             

            That paper you wrote is a masterpiece... well done Michael!

             

            Too often we get told to 'just sign it'. 'It will never come to anything'. 'We'll never get the job done if we go down the complex path'. It's a bit like marrying for immigration purposes only to find out they went to the bank and cleaned you out.

             

            Typical legal department anywhere... they never commit and they never admit. Now they almost want to bill you for legal advise.

             

            Thanks also Peter for the explanation about the context of these kinda contracts. Where Uni's are carefully protecting genes and molecules... contrastingly we in the FM world have a history of sharing our little tricks and tips because it is such a small fraction of the whole.

             

            I make clear to my clients... I own the shell... you own it's contents... end of story. I have quite a few legal clients and they are very happy with that simple division. It seems that the UQ lawyers don't live in this real world..

             

            I bet they don't have the same argument with Microsoft. I wonder if your client has the ability to buy 'off the shelf' software for a large sum which is paid off in instalments and comes with it's own prewritten terms of license... that just happens to take a while to download. :-)

             

            - Lyndsay