Commissioning
The person who commissions a work likely owns the resulting work.
There often arises a need, during the development of an invention or its branding, to rely on outside parties to design certain elements. For the IP owner this represents a very dangerous situation, despite how benign and safe the situation may appear from their normal perspective. More than at any time, the IP owner is in a position to lose key elements of their IP.
The general principle in New Zealand is that you retain ownership of any IP arising if you commission another party to undertake certain development work, whether it be solving a problem in the function of your invention, coming up with a design able to be manufactured in a specific material, or a new brand name in packaging. By commissioning is meant – approaching and instructing another party to perform certain work on the basis that you will pay for their effort and/or expenses. There must be no prior conditions such as – I will only pay if I like what I see. This then enters into a free-lance arrangement where the other party has no guarantee of payment and will therefore own their contribution to the IP. If this is a technical solution to a problem or alternative solution, you may have a difficult problem. They may then wish you to acquire their rights at a yet to be negotiated price, or insist on being named as an inventor if your applications for IP include their contribution.
The problems arising from non-commissioned works can be problematic for the instructing business, particularly given the deadlines associated with most IP, and can be very difficult to sort out. It is therefore an area best avoided, and thus any hiring of outside expertise should be on the basis of a commissioned arrangement. An instructing letter commissioning the other party is well advised. Where confidentiality remains an issue, a suitable agreement with confidentiality provisions and a section identifying ownership of IP, should definitely be considered.
The person who commissions a work likely owns the resulting work.
There often arises a need, during the development of an invention or its branding, to rely on outside parties to design certain elements. For the IP owner this represents a very dangerous situation, despite how benign and safe the situation may appear from their normal perspective. More than at any time, the IP owner is in a position to lose key elements of their IP.
The general principle in New Zealand is that you retain ownership of any IP arising if you commission another party to undertake certain development work, whether it be solving a problem in the function of your invention, coming up with a design able to be manufactured in a specific material, or a new brand name in packaging. By commissioning is meant – approaching and instructing another party to perform certain work on the basis that you will pay for their effort and/or expenses. There must be no prior conditions such as – I will only pay if I like what I see. This then enters into a free-lance arrangement where the other party has no guarantee of payment and will therefore own their contribution to the IP. If this is a technical solution to a problem or alternative solution, you may have a difficult problem. They may then wish you to acquire their rights at a yet to be negotiated price, or insist on being named as an inventor if your applications for IP include their contribution.
The problems arising from non-commissioned works can be problematic for the instructing business, particularly given the deadlines associated with most IP, and can be very difficult to sort out. It is therefore an area best avoided, and thus any hiring of outside expertise should be on the basis of a commissioned arrangement. An instructing letter commissioning the other party is well advised. Where confidentiality remains an issue, a suitable agreement with confidentiality provisions and a section identifying ownership of IP, should definitely be considered.
