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Jamie-Law
Jamie-Law, Solicitor
Category: Law
Satisfied Customers: 5001
Experience:  Solicitor
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My limited company has developed an app which is used in

Customer Question

My limited company has developed an app which is used in healthcare. We developed this in conjunction with a hospital here in the UK. Initially we verbally agreed to a 70/30 split of intellectual property rights. After lots of negotiation we are now about to sign a contract which will assign all of the IP rights to the hospital, and I will receive a revenue share. We will also be the 'preferred partner' for any similar app developments with the hospital. I have a copy of this contract which I am now reviewing. What should I be looking out for? Can you help me ensure I get a reasonable deal?
Submitted: 1 year ago.
Category: Law
Customer: replied 1 year ago.
Posted by JustAnswer at customer's request) Hello. I would like to request the following Expert Service(s) from you: Live Phone Call. Let me know if you need more information, or send me the service offer(s) so we can proceed.
Expert:  Jamie-Law replied 1 year ago.

Hello my name is ***** ***** I will help you with this.

How many pages is the document please?

Customer: replied 1 year ago.
Hello! It's 15 pages.
Expert:  Jamie-Law replied 1 year ago.

I can look at this for you, but because of the length it would be an additional cost.

If you would like me to assist, might I invite you to consider the additional offer.

Customer: replied 1 year ago.
Ok.. can you confirm you will be able to look at it today? And can you confirm we will be able to chat on the phone beforehand so I can give you a bit more comprehensive background info?
Expert:  Jamie-Law replied 1 year ago.

What time do you need it by? You need to be clear and let me know what you want. If its a a review, that is one price. If you want a phone call and a review that is is one price.

I can then submit the appropriate offer for you, so that we both know where we are.

Thanks!

Jamie-Law and 2 other Law Specialists are ready to help you
Customer: replied 1 year ago.
Please see the document attached. It would be great if I can have the review back by the end of the day.
Expert:  Jamie-Law replied 1 year ago.

I cant see it, can you try just attaching it again?

Customer: replied 1 year ago.
The page doesn't seem to be working correctly. One moment... or is it easier if I email it to you?
Expert:  Jamie-Law replied 1 year ago.

You can, but that takes longer:***@******.***

Expert:  Jamie-Law replied 1 year ago.

I am reliant upon the admin team forwarding it to me

Customer: replied 1 year ago.
The add files button does not work. Here it is via dropbox instead: https://www.dropbox.com/s/o7zu58innwbo91p/Revised%20Draft%20Llama%20Safe%20Revenue%20Share%20Agreement%2019%20July%202016.docx?dl=0
Customer: replied 1 year ago.
Can you confirm receipt?
Expert:  Jamie-Law replied 1 year ago.

just on the train so can't tell on iPad. I will be at office shortly.

Customer: replied 1 year ago.
No probs. Look forward to hearing from you.
Expert:  Jamie-Law replied 1 year ago.

It is a very well prepared document. Very good in terms of drafting.

2.2 does say whether this includes VAT. If not, it should be specified.

2.9 would add such request not to be unreasonably refused

5.5 says you cant copyright, patent it - I assume you are aware of that?

6.2 the code for what? This or the new product

7.4 this says it wont be modified and the Trust wont pay if it is. What about upgrades?

9 the agreement continues unless terminated

13.1 The Trust can terminate if hasnt had any revenue for 1 year

14 you cant compete

Schedule 2 etc doesnt mean anything as I am not medically qualified.
But the agreement itself seems quite sound. It all seems good to go.

Is there anything in particular which concerns you? Nothing jumps out at me.

Customer: replied 1 year ago.
Thanks.Few things concerning me:1. When I originally negotiated with the trust to build the app, we agreed to share "the IP" 70/30. I quoted them £10k and charged them £7k to build it. They are now asking me to sign over all the IPR to them (by way of this contract)... so can I reasonably charge them £3k for relinquishing my 30%?
... Could I reasonably charge them more than £3k, as the value of the IPR has increased dramatically since inception?
... If a payment for signing over my IPR is reasonable.. then should this be written into the contract or would it be enough to invoice them for it before signing?2. Re 6.1 and 7.5... During the development of this app I wrote some code which scans barcodes found on patient's wristbands. This is just one part of "the product" which I am relinquishing my IPR for. What I want to be free to do is to develop other apps for healthcare which include barcode scanning in the overall solution. My understanding is that under this contract, if I have any ideas for an app which uses barcode scanning, I must offer to work with the trust on it, and if they decline I will be free to work on it myself. My understanding is that this would also work the other way around... if they have ideas for an app which uses barcode scanning, they must come to me?In other words; I am concerned that if I want to build a product which uses barcode scanning (but is otherwise unrelated to the Llama product) at some point in the future, that I will be forced to give the trust the IPR for this idea. Isn't "you must offer to work with us on the idea" quite open-ended? Under what terms? Not the same terms as this contract, right? Do you see my confusion?3. Also re 6.1... let's say I have an idea for an "extension of the use of wrist band scanning/positive patient identification/labelling solution in a healthcare environment"... I understand that I must offer to work with the trust on this. But how long do they have to decide if they want to work with me on it or not? If it's going to take them a year to decide then they could ruin the opportunity for me? Can we set a time limit in the clause (maybe 28 days), and how would this be written?4. Re 8.4... my understanding is this basically excludes me from the indemnification in 8.1. Is this dangerous for me? Could I insist that it DOES extend to paid sub-contractors?5. They are asking me to give them a "schedule" of my rates for updating the app in future. Does that sound like a good idea to you? Are there any things I should add in particular? I was thinking of simply listing a day rate for time spent.Really appreciate your help with this.
Expert:  Jamie-Law replied 1 year ago.

Re 30% that is a matter of negotiation. You cant charge them if you sign the agreement because it does not allow you to.

If you want to charge then you need to have the contract to amend as to reflect this.

Re IP - yes they must come to you. There is no time limit but you can set one for 28 days.

Re 8.4 Yes you can insist it includes sub contractors

Schedule - yes that would seem good. Make sure you reflect inflation increases

Customer: replied 1 year ago.
Sorry... can you elaborate a bit please?
Expert:  Jamie-Law replied 1 year ago.

Elaborate on what please? Thanks

Customer: replied 1 year ago.
Re 30% that is a matter of negotiation. You cant charge them if you sign the agreement because it does not allow you to. If you want to charge then you need to have the contract to amend as to reflect this.Please check your grammar. I am struggling to understand what you mean. I want to know what clause I need to add so that they have to pay me £3k for signing it. OR I want to know if invoicing them before signing will be sufficient.-- Re IP - yes they must come to you. There is no time limit but you can set one for 28 days.How do I write this clause please?-- Re 8.4 Yes you can insist it includes sub contractorsWould that be as simple as deleting that clause?-- Schedule - yes that would seem good. Make sure you reflect inflation increasesCan you tell me how to write that please?
Expert:  Jamie-Law replied 1 year ago.

You can only charge £3k for your 30% if the agreement permits.

As to the IP 28 days - just tell them that they need to narrow it down and be more specific. They need to word it accordingly. I dont think at this stage you need to go back with the clause, they need to provide one for comment.

8.4 - yes it can include sub contractors but you just add onto it that any sub contractor would also be bound

Inflation - just that when the review takes place account is taken for inflationary increase - just word it as such

Does that clarify?