Negotiated Intellectual Property

[DaisyChain]

I'm looking for some advice about whether I can negotiate intellectual property. I work for a company full-time and do freelance as well. I developed a web app for the company which is now of interest to some organisations we work with. With my company's full permission I may integrate this web app into these organisation's systems with the theory that I charge for the implementation through my freelance work. Although the web app was built specifically for my employers, the entire concept and idea came from me so I would like to retrieve the rights to use the code as I see fit and then pay my employers either a one-off fee or (more likely) a licence fee for every time its used. Is this realistic?

What are your experiences of negotiating IP with existing employers? I can imagine it could be a bit of a minefield!

[shadowbox]

I would imagine your employment contract may enlighten you on the offical stance of the company - I would presume they retain all IP on everything their employees create and I would imagine they'd take a dim view to the attitude:

'I would like to retrieve the rights to use the code as I see fit'

I'd recommend you drop that way of thinking before you enter into any negotitions, because in the end they pay you a wage to create this software for them.

I would imagine your idea of paying a licence fee would be fine, after all, this is what your employers would do anyway if they were going to release the product commercially. Your aim should be to negotiate a reasonable rate on the license fee, taking into account your history with the company. Also, if you feel you can get a lot of licenses sold, you'll have even more of a bargaining tool.

[Sgt. Baboon]

Most employers retain rights to anything you create while working with them. Even the IP. I think you are out of luck, unless your employer is ok with it. If they are, I'd get it in writing.

[DaisyChain]

... in the end they pay you a wage to create this software for them.

Ah but you see they don't. Its not a web/software company and I'm just employed to look after their website. This app was something that I developed because I wanted to stretch myself professionally - it occured to me that it could help ease the workload of some of the other staff so I built it. Does this not give me a stronger position?

[DaisyChain]

Particularly now they are looking to make a quick buck out of it by selling it on ;-)

[shadowbox]

So did you create this software on company time? If so, it wouldn't matter if they are a software company or not - you are paid a wage as their web developer to perform various work for them, and as such, all scripts, designs and coding you create for them while on company time will surely be their property (unless they have a non standard employment contract, which is unlikely).

On the other hand, if you developed it in your own time and then offered it to the company, that's a different matter, and you'll certainly be considered the owner of the software (unless you signed something to the contrary).

I'm no solicitor though...