In the area of Intellectual Property Law Payton Business Legal Advice has specialized in two fields, i.e. Protection of Software Development and Licensing of Intellectual Property.
Generally speaking, the software which you develop is protected by copyright law provided that the software is independently created (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity. This protection simply means that you as the author of the software has the exclusive right to use and exploit your software and that others need your permission to use or exploit your software.
If however, you agree to develop software for somebody else and you are getting paid for it, your legal position can be different. If you are an employee, developing software as part of your job, the issue of who owns the copyright in the software which you develop is governed by the applicable provisions of your employment agreement and/or the law governing your employment relationship. In most cases this will mean that your employer owns the copyright in the software which you develop. On the other hand, if you have set up your own business in developing software for third parties, there are various ways to arrange the issue of copyright ownership.
Firstly, you can agree that you -as author of the software- remain the owner of the copyright in this software, and that you grant the other party a license to use and exploit the software in return for the money they pay you. Unless you grant the other party an exclusive world-wide license, you are free to grant other parties a license, since you have retained the copyright.
Secondly, you can agree to transfer ownership of the copyright to the other party in return for the money they pay you. In this case the other party gains the exclusive right to use and exploit the software, provided that they can agree to grant you a non-exclusive license to use the software.
Thirdly, it may be that you intend to develop software together with somebody else or another company. Also in this type of relationship it is important that -in addition to any legal provisions which may apply- the ownership and use of the developed software is clearly and unambiguously defined in a binding agreement.
Finally, you may choose not to make an agreement with respect to the ownership of the copyright in the software which you develop -or you may forget to address this issue in your agreement. Please note that in this case the issue of ownership of the copyright is governed by the law applicable to the relationship between you and the other party. Since this may have unintended consequences, it is more useful to address this issue in your agreement with the other party
Therefore, in order to safeguard your legal position as a software developer it is essential that you invest in expert legal advice with respect to setting up the right contractual relationship with the other party. In this way the risk of possible disputes with respect to copyright ownership or the creation of unintended consequenses is limited to a minimum.
Licensing can benefit you in two ways, viz. granting royalty-generating licenses under your Intellectual Property, and acquiring licenses under the Intellectual Property of others.
Granting licenses to others under your Patent or Copyright in return for royalty payments can become a source of substantial income depending on the market value of your invention or work. Since the Patent or Copyright remains your property, you retain the right to use and exploit your invention or work as well as the right to continue granting other people the right to do the same. A well known example is the "sale" of software packages. In fact, the software is rarely "sold" in the sense that the ownership of the copyright in the software is transferred to the buyer. What is really sold may be a box which contains a floppy or CD-ROM, instructions for use and a license agreement. Most of the price paid, however, is in fact paid as a royalty for the right to use the software in accordance with the license agreement.
On the other hand acquiring licenses under the Intellectual Property of others may be beneficial to you in case it is more cost-effective to license the necessary (secret) know-how for the development of your business from other parties than trying to invent the wheel yourself. Also, acquiring licenses to exploit well-known trademarks in new markets and territories may contribute substantially to the development of your business.
