IP transfer question

[Walter Harley]

If I manufacture a product under license from its designer, I unavoidably
learn aspects of its design which I may then, intentionally or not, use in
my own subsequent designs.

Suppose that over time, I evolve the product's design, perhaps to the point
that it is no longer recognizably derivative. Typically, how is the
question of "when do I stop paying royalties" addressed in contracts?

That is, what contractual terms are generally used to protect the other guy
from me just tweaking his design, calling it my own, and selling it without
paying royalties; and, on the other hand, to protect me from him claiming
that any vaguely-related product I ever subsequently design is really his
and I owe royalties on it?

 

[Ben Bradley]

If I manufacture a product under license from its designer, I unavoidably
learn aspects of its design which I may then, intentionally or not, use in
my own subsequent designs.

Suppose that over time, I evolve the product's design, perhaps to the point
that it is no longer recognizably derivative. Typically, how is the
question of "when do I stop paying royalties" addressed in contracts?

That is, what contractual terms are generally used to protect the other guy
from me just tweaking his design, calling it my own, and selling it without
paying royalties; and, on the other hand, to protect me from him claiming
that any vaguely-related product I ever subsequently design is really his
and I owe royalties on it?

IANAL, but I understand they make huge amounts of money for
answering such questions, and even more once one party contacts
another with a claim of infringement.

What's the best law school in the Atlanta area?

 

[Fred Bloggs]

Incredibly this "Walter Harley" flake also locates to Mercer Island,
Washington- same as the pseudo-intellectual, Larry Brasfield. Looks like
a match- good for nothing parasite riffraff garbage people...Hey, aged
hippie, GFY and drop dead at your earliest convenience.

 

[richard mullens]

If I manufacture a product under license from its designer, I unavoidably
learn aspects of its design which I may then, intentionally or not, use in
my own subsequent designs.

Suppose that over time, I evolve the product's design, perhaps to the point
that it is no longer recognizably derivative. Typically, how is the
question of "when do I stop paying royalties" addressed in contracts?

That is, what contractual terms are generally used to protect the other guy
from me just tweaking his design, calling it my own, and selling it without
paying royalties; and, on the other hand, to protect me from him claiming
that any vaguely-related product I ever subsequently design is really his
and I owe royalties on it?

This is sci.electronics.design.

Here, people give of their time and experience in the furtherance of the spread electronic design knowledge to those with a
genuine interest in electronics (rather than freeloaders who just want a shortcut).

Your question, which is more about restricting the freedoms of others, is liable to get short shrift from the commies on this
group (I count myself among them) - but doubtless there will be a few who sympathise with you.

If you have to ask a question like this, then my advice would be that you do it elsewhere.

 

[Walter Harley]

This is sci.electronics.design.

Here, people give of their time and experience in the furtherance of the
spread electronic design knowledge to those with a genuine interest in
electronics (rather than freeloaders who just want a shortcut).

Your question, which is more about restricting the freedoms of others, is
liable to get short shrift from the commies on this group (I count myself
among them) - but doubtless there will be a few who sympathise with you.

If you have to ask a question like this, then my advice would be that you
do it elsewhere.

You seem to have misunderstood both me and my question. I apologize if that
misunderstanding was due to a lack of clarity on my part.

But I confess, I do not see what part of my question was unclear. Are you
under the impression that contracts are bad? Or that licensing another's
designs is bad? Or that evolving someone else's design is bad? Or that
asking opinions is bad?

If I may clarify:

I know a fellow who, after an illustrious career as an engineer himself, is
retiring. I am considering taking over the manufacture of some of his
products. Admittedly I could simply have designed competing products
myself; but I have always felt that if a good product is on the market at a
reasonable price, I would be serving the public and the industry better to
focus my efforts elsewhere. So, I waited until an opportunity came up to
license his products.

That opportunity has arisen, and I am trying to pursue it. I am happy to
pay him a fair royalty. However, I want to be fair to both of us; and so I
want to write a contract that deprives neither of us of our due. He should
be entitled to royalties on his design; I should be entitled to ownership of
my own designs, and to my improvements on his design.

This is a common situation, and a common problem. I am simply wondering
what the customary solution to it is. I could pay an IP lawyer a large
amount of money to get a single opinion, which I might or might not trust;
but thankfully I also have this forum as a recourse, where there are many
skilled engineers who have probably encountered this problem at one time or
another and who are willing to share their opinion.

 

[John Woodgate]

I read in sci.electronics.design that Walter Harley

That opportunity has arisen, and I am trying to pursue it. I am happy
to pay him a fair royalty. However, I want to be fair to both of us;
and so I want to write a contract that deprives neither of us of our
due. He should be entitled to royalties on his design; I should be
entitled to ownership of my own designs, and to my improvements on his
design.

Write in your contract that his rights (carefully enumerated and
described in excruciating detail in a schedule to the contract) expire
after n years (n to be agreed, maybe 5 or 10 depending on their nature)
unless extended by agreement at that time. In the event of failure to
agree, the matter shall be put to binding arbitration under an
arbitrator appointed by an independent third party, such as the
President of the IEEE.

You can vary this a bit to suit your particular case, without violating
the principles. You should check that such terms in a contract are
allowed by US law.

 

[Fred Bloggs]

You seem to have misunderstood both me and my question. I apologize if that
misunderstanding was due to a lack of clarity on my part.

But I confess, I do not see what part of my question was unclear. Are you
under the impression that contracts are bad? Or that licensing another's
designs is bad? Or that evolving someone else's design is bad? Or that
asking opinions is bad?

If I may clarify:

I know a fellow who, after an illustrious career as an engineer himself, is
retiring. I am considering taking over the manufacture of some of his
products. Admittedly I could simply have designed competing products
myself; but I have always felt that if a good product is on the market at a
reasonable price, I would be serving the public and the industry better to
focus my efforts elsewhere. So, I waited until an opportunity came up to
license his products.

That opportunity has arisen, and I am trying to pursue it. I am happy to
pay him a fair royalty. However, I want to be fair to both of us; and so I
want to write a contract that deprives neither of us of our due. He should
be entitled to royalties on his design; I should be entitled to ownership of
my own designs, and to my improvements on his design.

This is a common situation, and a common problem. I am simply wondering
what the customary solution to it is. I could pay an IP lawyer a large
amount of money to get a single opinion, which I might or might not trust;
but thankfully I also have this forum as a recourse, where there are many
skilled engineers who have probably encountered this problem at one time or
another and who are willing to share their opinion.

You sure as hell sound more and more like Larry Brasfield each time you
post, chickensh_t pseudo-intellectual and pseudo-sophisticated scum of
the earth , coward , liar, and thief. Why don't you go FY, phony- your
kind is not wanted around here- you are a trouble making maggot and
every thread you enter will be disrupted- whether you have it killfiled
or not- Google and every other archive will show you as exposed for the
low life scum that you are. First you take a stab at impersonating an
engineer- now you want a shortcut to impersonating a lawyer. What's the
matter, big shot, don't have much cash on hand? Geez, wonder why that
could be...

 

[richard mullens]

You seem to have misunderstood both me and my question. I apologize if that
misunderstanding was due to a lack of clarity on my part.

But I confess, I do not see what part of my question was unclear. Are you
under the impression that contracts are bad? Or that licensing another's
designs is bad? Or that evolving someone else's design is bad? Or that
asking opinions is bad?

In the scheme of things, there is a place for all creatures, even the vultures that wait for the opportunity to pick over the
carcasses of those weakened by age.

 

[James Meyer]

........ and so I want to write a contract .......

That's your major problem. Just because you're a smart engineer, it
doesn't follow that you are qualified to write a contract.

Someone who acts as his own lawyer has a fool for a client. That's a
trite saying, but like many, is true.

Find one lawyer that both you and the other guy can trust, split the
fees, and sit down with him so both of you can explain what you want the
contract to cover and not cover. If the two of you can't work that out, then no
contract, even one *you* write, will be worth the paper it's written on.

Jim

 

[Larry Brasfield]

Incredibly this "Walter Harley" flake also locates to Mercer Island, Washington-

"Incredibly" is the operative term here. A quick look at
Walter's post headers, then an inferrable website,
http://www.cafewalter.com/cafewalter/whatiscwa.htm
shows a claim of Seattle residence and a Seattle phone.
One Walter Harley is in the Seattle phonebook, having
that same phone number, with a Seattle address.

For those unfamiliar with local geography here, Seattle
and Mercer Island are disjoint areas.

same as the pseudo-intellectual, Larry Brasfield. Looks like a match- good for nothing parasite riffraff garbage people...Hey,
aged hippie, GFY and drop dead at your earliest convenience.

A lot of electronic development happens around here,
at the hands of people enjoying the normal range of
competence. Fred's delusion to the contrary denotes
nothing beyond his own sickness of spirit.

[OP's post left to show what triggered Fred's spew.]

 

[Walter Harley]

Someone who acts as his own lawyer has a fool for a client. That's a
trite saying, but like many, is true.

I have a lawyer. I'm trying to gain additional points of view.

Someone who acts as his own lawyer does indeed have a fool for a client.
But someone who assumes that his lawyer (or other professional) knows
everything there is to know, isn't doing due diligence. If I were sick, I'd
look up the side effects of the medicine my doctor prescribed. If my pipes
were leaking, I'd get a bid from more than one plumber.

All I'm trying to do is learn more about the customary, fair solutions to a
common engineering business situation. My interest is in forming an
agreement that will be a win for both parties and will not blow up in our
faces later on. A contract based on a bad agreement is a liability, not an
asset. To have a good contract, you need to have a sensible, fair
agreement, based on clarity, shared values, and practical experience.

It seems reasonable to ask what agreements folks here have used in this
situation. There is a range of solutions, some with hidden gotchas that I
would like to avoid. Asking for the experience of others seems a good way
to do that, if they are willing to share those experiences.

Jim (or others), in your experiences with IP licensing, what was your
solution to the problem of defining when royalties are no longer due?
(Thanks, John W., for your answer.)

 

[John Woodgate]

I read in sci.electronics.design that Walter Harley

But someone who assumes that his lawyer (or other professional) knows
everything there is to know, isn't doing due diligence.

Absolutely. Part of the reputation that lawyers have for creating chaos
is due to people not telling them all the facts. I've experienced some
of this when acting as an expert witness. You get a brief from the
lawyer and send back around 20 key questions that the brief simply
doesn't address.

 

[Larry Brasfield]

I have a lawyer. I'm trying to gain additional points of view.

There was no evidence in your original post that you intended
to act as your own lawyer. Mr. Meyer's reproach was both
premature and irrelevant to the clear questions you raised.

Someone who acts as his own lawyer does indeed have a fool for a client. But someone who assumes that his lawyer (or other
professional) knows everything there is to know, isn't doing due diligence. If I were sick, I'd look up the side effects of the
medicine my doctor prescribed. If my pipes were leaking, I'd get a bid from more than one plumber.

A point missed by the "Let the lawyer(s) do it" crowd is that
the lawyer's charter is to effect the intentions of the parties in
a legally enforcable way. A good lawyer may advise clients
as to terms that should be present, but it is ultimately up to
the parties to determine what their agreement achieves. That
job cannot be simply handed over to some lawyer(s).

I see in your original post only questions relating to your proper
role in creating an agreement with the *assistance* of a lawyer.

All I'm trying to do is learn more about the customary, fair solutions to a common engineering business situation. My interest is
in forming an agreement that will be a win for both parties and will not blow up in our faces later on. A contract based on a bad
agreement is a liability, not an asset. To have a good contract, you need to have a sensible, fair agreement, based on clarity,
shared values, and practical experience.

It seems reasonable to ask what agreements folks here have used in this situation. There is a range of solutions, some with
hidden gotchas that I would like to avoid. Asking for the experience of others seems a good way to do that, if they are willing
to share those experiences.

I will share some of mine which serve to illustrate why your
approach to contract terms is a good idea.

Once, I was invited to work for a large corporation which
had an IP protection and assignment agreement obviously
written by one or more lawyers with no evident intention
of being fair. (If executed), it claimed rights that went far
beyond what anybody would consider fair under ordinary
circumstances. It so happened that I had some IP of my
own, developed before I ever talked to that corporation,
which I would be giving away all rights to if I signed their
agreement. Because I thought that IP was valuable, and
had other employment options, I insisted their agreement
would have to be ammended before I could sign it. Getting
that perfectly reasonable change effected took more time
on the part of their lawyer(s) and delayed my start date by
a week or more. What was funny about the affair was that
the guy hiring me understood how unreasonable those terms
were and never gave me the slightest criticism for not being
willing to sign under the circumstances.

On the other side of such problems, I have always been
favorably impressed when I encounter agreements that
are clealy intended to be fair and not exploit the fact
that many employees sign paper without really reading it.

 

[Walter Harley]

Thanks. I don't see Fred's posts, myself; although he often has good
information, I found the level of vitriol higher than I was willing to pay
attention to, so he's in my blocked senders list.

One Walter Harley is in the Seattle phonebook, having
that same phone number, with a Seattle address.

The very same. Feel free to visit or call.

 

[Fred Bloggs]

You're a worthless p.o.s. and fraud- please drop dead at your earliest
convenience.

[...snip usual garbage...]

 

[Fred Bloggs]

A point missed by the "Let the lawyer(s) do it" crowd is that
the lawyer's charter is to effect the intentions of the parties in
a legally enforcable way. A good lawyer may advise clients
as to terms that should be present, but it is ultimately up to
the parties to determine what their agreement achieves. That
job cannot be simply handed over to some lawyer(s).

That's a crock of manure- guess you have no understanding of the concept
of fiduciary responsibility. So you continue to shoot your mouth on
subjects about which you know zilch..

 

[James Meyer]

There was no evidence in your original post that you intended
to act as your own lawyer.

Walter said, "I want to write a contract..." That was what I was
replying to.

Mr. Meyer's reproach was both
premature and irrelevant to the clear questions you raised.

My original reply also included this, which you might have missed...

Find one lawyer that both you and the other guy can trust, split the
fees, and sit down with him so both of you can explain what you want the
contract to cover and not cover. If the two of you can't work that out, then no
contract, even one *you* write, will be worth the paper it's written on.

Jim "not premature, but full term" Meyer

 

[Larry Brasfield]

Walter said, "I want to write a contract..." That was what I was
replying to.


My original reply also included this, which you might have missed...

Find one lawyer that both you and the other guy can trust, split the
fees, and sit down with him so both of you can explain what you want the
contract to cover and not cover. If the two of you can't work that out, then no
contract, even one *you* write, will be worth the paper it's written on.

Jim "not premature, but full term" Meyer

Given that information, (which I did not see), my comments
were too strongly stated. It appears that you and I agree
on at least one useful role for a lawyer. (I have taken the
exact approach you suggest with one lawyer. After he gave
the obligatory spiel about representing competing interests,
he went ahead and did exactly what we (the parties) wanted.)

Please accept my apology for any offense.

 

[Rich Grise]

.

That opportunity has arisen, and I am trying to pursue it. I am happy
to pay him a fair royalty. However, I want to be fair to both of us;
and so I want to write a contract that deprives neither of us of our
due. He should be entitled to royalties on his design; I should be
entitled to ownership of my own designs, and to my improvements on his
design.

This is a common situation, and a common problem. I am simply wondering
what the customary solution to it is. I could pay an IP lawyer a large
amount of money to get a single opinion, which I might or might not
trust; but thankfully I also have this forum as a recourse, where there
are many skilled engineers who have probably encountered this problem at
one time or another and who are willing to share their opinion.

I don't know if it's "customary," but the logical thing to do is to sit
down with your client, and talk and take notes until you have something
that you're both happy with.

Then have a lawyer look over it for legalities, but if you've written
your agreement in plain English, using declarative sentences, and
spelling out in excruciating detail exactly what's protected, and
a paragraph about derivative works, you should be covered. If you've
got proprietary information in the contract, then declare the contract
itself to be covered under the same intellectual property agreement.

Look up "non-disclosure agreement".

The secret to a contract is that it's balanced - both people are
satisfied with the deal, and both agree on what should happen if
something goes wrong.

Good Luck!
Rich

 

[John Woodgate]

I read in sci.electronics.design that Rich Grise <[email protected]>

Look up "non-disclosure agreement".

I tried that; I can't see it because it seems to be covered by an 'NDA',
whatever that is.