The objective of the following proposal granted by the Law Firm García Magliona & CIA, collaborators on this study, is to point out a description of clauses of authorship and ownership of inventions protected by industrial property rights, as well as their assignment in contracts for the provision of services or manufacturing, whose purpose is innovation or technology transfer, protecting the innovator in this area.
Considering that the IP law establishes that if the agent of the innovation belongs to a company and / or carries out the work by order, the industrial property or copyright of the result will belong to the person who ordered the service or to the company where he / she is working, as the case may be, the Law Firm proposes the following clauses in order to protect the developer of the technology:
In case of service provision
A clause is proposed in contracts for the provision of services that reverse the ownership of IP established by law (where the result of technological development belongs to the principal). This would allow the creator of technology to own what exceeds the object of the contract, extending his / her right to intellectual and industrial property.
It is also proposed that if the counterparty (principal) wants to enforce his / her rights as the client, the parties must agree on an understanding to implement the solution and thus ensure its correct execution, to avoid loss of prestige of the service provider. This must be part of an agreement in any event that the client wants to implement the created object. (See clause P.89)
In case of Technology Collaboration Agreements
The proposed clause is aimed at the commitment of the parties to share the rights of the result of technological development.
It is designed for technology collaboration agreements that are in an initial technology production stage (contracts with Providers and Producers). Thus, its purpose is to provide and / or produce technology, which is protected or could be protected by industrial property rights, but, at the same time, it allows commercial exploitation that generates profits in percentages agreed on for each of the parties.
Finally, the proposed clause is intended to protect the goodwill of the technology that could be made by a third party outside the contract, when for example the producer or provider orders or outsources its production. In case of bidding to a third party, the service provider must be informed and give its consent to ensure the proper use of the technology, obtaining a minimum percentage of the amount awarded. (See clause P.91)
Other clauses that must be present in any technology collaboration agreement:
Declarations
A proposed clause designed to protect broadly the rights of intellectual and industrial property, not only in regard to the final product, but also to all its background, so that the parties also acquire the know-how. This would prevent any of the stakeholders from commercializing the product to third parties without the consent of the other party.
IP Confidentiality
To guarantee this, the parties have the additional obligation to maintain confidentiality on the subject of the contract so that, in the event of infringement, judicial actions pertaining to the law of unfair competition and compensation for damages may be applied.
