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 Outsourced SoftwareDevelopment Projects
 
 
. , ..Partner, Intellectual Property Transactions Group
Fenwick & West LLP..-sa ecnoogy anagemen enerAutumn Seminar SeriesOctober 12, 2006
 
Managing IP Ownership is About Process
enng wnerspcensng o
We pay, we own
Invention Disclosures
Present Assignment
Note Secial India Coriht Issues
Further Assurances
Pre-Existing Contractor IP
Third Party/Open Source Code
Specific Statements of Work
eveopmen anarsccepance esng
Controlling Contractor Employees
Invention Assignment Agreements
Confidentiality
Non-Cometes
Screening and Approval
Key Persons
Exit Interviews
Security Processes
ource oe ccess
Facilities
IT Security
Anti-Virus Process
2
 
 
We Pay We Own: Obtaining Rights from Contractors
onser ss to auaton ose y utsource eveopment
Invention Disclosure
Contractor will promptly disclose and provide to the Company allinventions, improvements, designs, original works of authorship,formulas, processes, computer software programs (in source and object, ,conceived or first reduced to practice or created, either alone or jointlywith others, in the course of performing its obligations hereunder,whether or not patentable, copyrightable or protectable as trade secrets(the “
Inventions 
”).
Ownership
an resen ssgnmen o a rgs n e eveope oware anany “Inventions” created in the course of work
Contractor “hereby assigns”
Under Indian Copyright Act, assignments must explicitly be worldwideand perpetual, and explicitly disclaim any right to reversion for failure toexploit.
“Such assignment will be worldwide, perpetual, and withoutany right of reversion, even if Company does not exploit all orany part thereof."
All copyrights are “Works Made for Hire”
Obtain further assurances with power of attorney
on-ompetton
Effect of Termination
Deliver Work in Progress
Ownership Vests in Company Even if Termination for Breach
Subject to Payment of Reasonable Development Costs Incurred
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