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ARTICLE · 17 APRIL 2013

5 Key IP Issues In Software Development Agreements

Fried Frank Harris Shriver & Jacobson
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A discussion on key five IP consideration corporate counsel should be aware of when retaining a contractor for the developing of a company's software.

United StatesIntellectual Property

From the Experts

In today's technology-rich environment, in-house corporate counsel must necessarily handle a range of agreements that implicate intellectual property issues. Here are five key IP considerations to be aware of when retaining a contractor to develop software for your company.

1. Get Ownership Right

Companies can benefit from owning the IP rights in developed software; IP owners can use, commercialize, and modify the software free of the scope restrictions and termination risks often associated with license agreements. However, developers may have legitimate reasons to retain IP ownership; for example, they have invested knowledge capital in the project and may be able to reuse code or build on it for other client projects. Before insisting that IP ownership is a "must," consider whether the software will be competitively sensitive (i.e., will it matter if the developer creates something similar for others?) and whether your company is likely to

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