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I have an open source project. A client contracted me to, among other things, develop new features in my project.

The contract is a typical one which states my work belongs to the company, etc. And has a special clause in which I can specify my possible "prior inventions" - where I would add my open source project -, which will be excluded from the contract.

My concern about this is the term "prior" which makes it unclear to me what happens when the "prior invention", continues being developed as part of the contract. Do entirely new features, which I add as part of the contract count as part of the "prior invention"?

I asked the client to change this wording but they insist that this is standard legal vocabulary and that everything I'll be doing in my project is part of the "prior invention".

I think it's clearer if they'd write something like "the project X including new developments of it during the scope of this contract or after, etc". Thoughts?

As mentioned in a comment, it can help to provide the text in the agreement, here the relevant excerpts:

Prior Inventions and Innovations. Contractor has disclosed on Exhibit D, a complete list of all inventions or innovations made by Contractor prior to commencement of the Services for Company and which Contractor desires to exclude from the application of this Agreement. Contractor will disclose to Company such additional information as Company may request regarding such inventions or innovations to enable Company to assess their extent and significance. Company agrees to receive and hold all such disclosures in confidence. Contractor waives any and all rights to inventions and/or innovations made as a result of the Services, even if such inventions and/or innovations are improvements on the existing inventions or innovations listed in Exhibit D.

And then the Exhibit D:

  1. Prior Innovations. Except as set forth below, I acknowledge at this time that I have not made or reduced to practice (alone or jointly with others) any inventions or innovations relevant to any Services under this Agreement (if none, so state):

[REPO NAME] existing code base as found in Github at [LINK] as of date of the Agreement. Both parties agree to keep a date-stamped copy of the [REPO NAME] code base as of the Agreement date.

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3 Answers 3

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Don't sign anything that you're not comfortable with. "It's standard" and "It's just boilerplate" are NOT acceptable responses.

YOU need to make the changes to the contract as you deem necessary, and send it back to them for approval. As a freelancer, you are every bit as responsible for the contract as they are. Contracts are negotiable up until they are signed.

If your client is not willing to negotiate the contract, I'd strongly suggest declining the project.

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  • Ok, thanks for your response, it's helpful (+1) (also fully agree), but a bit too generic - I'll wait if maybe there's a more specific answer concerning the open source thing.
    – User
    Commented Sep 4, 2016 at 18:57
  • BTW a small additional question, if you want to answer, who does usually provide the contract? The freelancer or the client? Is there a convention or something for this?
    – User
    Commented Sep 4, 2016 at 18:59
  • It all seems pretty standard to me, your prior inventions (libraries, snippets, methods etc) are not the companies, but anything they pay you to do and you do for them are theirs. Given that you have not included the relevant part of the contract I think the answer given is a good one. It does not matter who provides the contract, as Wesley said, it is negotiated until signed by both parties. For smaller companies the contractor would normally provide one, for larger companies they usually will have their own. If you are concerned, then you should seek legal advice from a contract lawyer.
    – PaulD
    Commented Sep 4, 2016 at 19:10
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    @PaulD uhm, wait, I didn't read the update to the first clause first (it wasn't like this the last time I read it I think). It states actually quite clearly that I give up the rights to improvements of the inventions if it's for the company. Lol?
    – User
    Commented Sep 4, 2016 at 20:53
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    @PaulD actually this is a question we had at the beginning of the project, on one side it can be seen as unfair the company alone paying for an open source project of someone else, but on the other if it was not for this, I'd not be working on the project at all. And "selling" generic features doesn't make sense, this not only damages my repository but also the fork of the company, which gets increasingly out of sync with the main repo and it becomes difficult to merge fixes, upgrades, etc.
    – User
    Commented Sep 4, 2016 at 22:30
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In most cases, what you sign, you agree to in such that what you add to the project under the customers time would fall under the contract.

I say "in most cases" because just because something is signed and in writing does not automatically imply you are tied to it. It varies by juristiction. I recall a contract question some years ago that was raised in the UK version of Computer Weekly and it was answered by a UK lawyer. The question had less to do with prior art, and more to do with freedom of movement whereby the contractor was prevented from working with any of the clients clients, or any other client that was in the same industry as the project for a term of two years. The lawyer replied that while such clauses were not uncommon, a three to six month period was acceptable, anything beyond that could be considered unduly restrictive and if it entered court, a judge could rule either one, or all clauses within the contract were invalid.

Point being here is be careful signing any contract, but if all else fails and you have signed, then seek professional advice because your ink on paper does not always mean you forfeit your heart and soul. A court would have the ultimate decision.

However...

Prior work would not fall part of the contract (unless you agree otherwise).

Sometimes, work you do after the contract could infringe the contract depending on how soon after the contract ended, and how close a relationship it poses to the original work. I'm not a lawyer but I keep a close eye on news articles related to such subjects. I've seen articles on folk trying to pass new work off as "new inventions" when they were just a modification of an existing "invention" (business sometimes do this to extend the patent period).

As others have said, don't sign anything unless you comfortable - however based on my 20+ years experience, many companies I have contracted for have a standard contract which they won't change (because it entails them having to go back to their legal department which can cost time and money and delay their project). Most of the time I just read the contract carefully, sign it, but work within the terms of the contract which could result in limiting my creativity.

Best of luck

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  • I should add that I would find the clause Contractor has disclosed on Exhibit D, a complete list of all inventions or innovations made by Contractor prior to commencement of the Services unduly painfully restrictive. It puts you in the position of remembering everything you contributed to however it would not automatically give them ownership of anything you had forgotten. If dispute took place you would have to show prior art proof of concept that took place before the beginning of the contract. Unless its a generously rich contract, I would think twice about accepting those terms.
    – fiprojects
    Commented Sep 6, 2016 at 10:55
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It would appear to be pretty clear to me:

Contractor waives any and all rights to inventions and/or innovations made as a result of the Services, even if such inventions and/or innovations are improvements on the existing inventions or innovations listed in Exhibit D.

This says they will own the rights to the new code which is part of your prior invention.

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  • No, well semantics really. It says that if you have a prior invention, then any improvements done to it as a consequence of the work they are paying for you to do for them, belongs to them and they have rights over it. That is surely correct. If I pay you to develop a wordpress widget for me, that widget is mine, not yours. Even though you previously coded wordpress, that widget is still mine.
    – PaulD
    Commented Sep 7, 2016 at 16:19

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