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:
- 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.