Careful thought at the outset can spare a lot of grief later

2:15pm Wednesday 7th May 2008

ONE of the many rewarding things about practising intellectual property (IP) law is being able to advise clients in both commercial work and litigation - and my work is pretty evenly divided between the two.

One area where there is most crossover is dealing with the intellectual property rights generated by a contractor.

Almost every week I get a call from someone who has fallen out with another party over the rights generated as a result of work one carried out under contract.

Almost as often, I help where one of the parties is contracted to carry out work, the rights in which will be valuable.

Then there are situations where these issues were overlooked initially but become of vital importance later to parties who want to continue their collaboration.

If you do not set down clearly in advance what is to happen with the rights generated by a project, then what happens must be implied.

If called upon, the courts will imply the minimum required to give effect to the intentions of the parties at the outset. The common, but incorrect, assumption is that rights generated will stay with the contractor and only a "non-exclusive"

licence is implied.

In fact, any level of exclusivity may be implied, as may the conclusion that the rights generated belong to the client.

Everything turns on the circumstances.

It is very important that these points be covered before any work is done.

This year cases have come before the courts relating to Daleks, Imperial Stormtroopers and other exotic subjects.

As interesting as these cases may be to the IP lawyer, they are painful, and expensive, experiences for the parties involved.

If you are faced with this kind of dispute there are alternatives. The best one is mediation, where the parties are helped by a professional but independent third party to deal with the issues.

If you are planning on providing or procuring services that will generate valuable IP, think carefully about the implications and talk them over with the other side. If you are not confident of doing so yourself, get a lawyer to put it in writing for you. It can save you astonishing amounts of grief later.

* Matthew Rippon is a partner specialising in intellectual property and technology matters at BHP Law on 01325-376524 or at Matthewr@bhplaw.co.uk

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