Tools you should consider using to assure that you own "your" technology.

What tools should be used to "vest" ownership in technology?

Once the protectable elements of a particular technology are identified, the owner must ensure that his or her ownership is "vested." Generally, the author, creator or inventor of a particular technology, working on his/her own time, will be the owner of the intellectual property rights to that technology. However, where employees and independent contractors are involved, the doctrines of "work for hire" and "commissioned works" may create presumptions that the employer, rather than the inventor, author or creator, is the owner of any resulting intellectual property rights. By using specific ownership clauses in employment, consulting and development agreements, an employer or consultant can clarify who will own any resulting intellectual property rights, regardless of the technology's creator or inventor. Assignment, "work for hire," invention and confidentiality and nondisclosure agreements, when used properly, can help ensure ownership of the technology that is sought to be licensed or sold.

What is a confidentiality/nondisclosure agreement and how should it be used?

Confidential disclosure (or nondisclosure) agreements require limited disclosure of proprietary information between parties, and serve to preserve and protect commercially sensitive information (such as financial information, know-how, inventions, customer or vendor information, formulas, and computer source code) and other rights that may constitute trade secrets or may be the subject of patent protection. In most states, the information need not qualify as a trade secret in order to render the confidential disclosure agreement enforceable.

A confidentiality agreement contractually binds a party from using or disclosing information or materials and should be considered whenever a party has access to proprietary or valuable information.

What is an independent contractor and how does this status affect ownership rights?

An independent contractor is a person who contracts to do work according to the contractor's own methods and is subject to the engaging party's control only as to the final result of the work. Many of the same factors used by the Internal Revenue Service to determine whether, for income tax withholding purposes, a person is an employee or an independent contractor are used by the courts to determine whether or not the creator of intellectual property rights is an independent contractor. Generally, rights in technology developed by an independent contractor are owned by the independent contractor, unless the contractor has signed an agreement to the contrary .

How does an engaging party obtain ownership of a work developed by an employee or independent contractor?

Typically, an engaging party can secure ownership in the underlying intellectual property rights of a particular technology via written agreement, signed by both parties, in which the employee or independent contractor conveys to the engaging party the rights to all works created under the agreement. These agreements typically take the form of invention or assignment agreements, or related clauses in employment, consulting, or development agreements.

However, if funding for the technology development is derived from federal or state grants, often a condition associated with the grant is that the ownership of any resulting intellectual property vests with the government or private body extending the grant.