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UKSolicitorJA, Solicitor
Category: Law
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Experience:  English solicitor with over 12 years experience
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I am an IT contractor, and the contract current assignment

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I am an IT contractor, and the contract current assignment contains a clause that essentially grants the company to which I'm assigned the intellectual property rights I produce whilst working (the text can be supplied, if required). I am about to embark on a project to write an application company. I already have some code that I have written on my own time that would be useful project. I would like to use this code in the project, thereby reducing the development time and benefitting the company, and in exchange I would like to hold the intellectual property rights to the finished application myself. I have discussed this with a company director and he is amenable to the exchange, but I would like to ensure that I am not exposed in the future, should I go on to privately sell the application.
What do I need to do to ensure that I hold the intellectual property rights to the application? Is a formal amendment to the contract required, or would a simple e-mail from the relevant director be sufficient?
Kind regards,
Gary Pendlebury
I would advise you to get a signed letter from the company's director whereby they agree that notwithstanding the formal contract between them and you, you own all IP rights in your code and that you will own all IP rights in the final product derived from the use of your code.
An email may also work as a last option but a signed letter is better proof than an email.
Hope this helps
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