Are the notes of a consultant the property of the client? 8 Answers as of December 05, 2013

I consulted with a company, for three years, to create intellectual property. Several patents were filed on the basis of my work, and were in my name. Never did the client ask for notes. However, after the company effectively dissolved, although it is still officially in business, the 'manager' had a lawyer send me a letter indicating that I must turn over all notes. I have consulted for about five companies, and never have they requested my notes, and 'notes' are not in the consulting contract.

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Gerald R. Black, Esq.
Gerald R. Black, Esq. | Gerald R. Black
You need to review your consulting agreement with this client to see if there is any mention of copyright assignment with respect to your notes. Any agreement that you may have signed will be determinative of the outcome here. If client?s counsel did not have you assign patent and copyrights, then the copyright in a work is owned by the work?s creator (you). The client has a legitimate interest in establishing the date of invention for these Patents, so the client may need to negotiate with you to obtain copies of your notes. You may need to retain the assistance of counsel in this matter.
Answer Applies to: Michigan
Replied: 12/5/2013
Barton Barton & Plotkin
Barton Barton & Plotkin | Maurice Ross
The notes are almost certainly the property of the client. I recently answered a similar question on another web-site. When you consult with a company to create intellectual property, you are at least implicitly agreeing that the IP which you create belongs to the company for whom you consulted. If so, this also at least implicitly means that your notes belong to this company. This is not even a close question.
Answer Applies to: New York
Replied: 12/5/2013
Banner & Witcoff, Ltd. | Ernie Linek
As a consultant - you were not an employee of the company. Otherwise - the company could have an ownership claim to your notes. Since your consulting contract failed to include materials developed by you which are protected by the US Copyright Laws - you retain ownership of your notes. You should be free to keep them or sell them to the company. Under the Copyright Laws: Copyright protection subsists from the time the work is created in fixed form. (Work = your written notes.) The copyright in the work of authorship immediately becomes the property of the author who created the work. (You are the sole author of your notes.) Only the author or those deriving their rights through the author can rightfully claim copyright. (Absent an agreement regarding your notes - they are yours.)
Answer Applies to: Massachusetts
Replied: 12/5/2013
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
Logically if you don't want to give them over - then don't. See how far they will go. If they file a lawsuit against you then you can decide how much it is worth it to you, to fight the matter. Ostensibly, may i ask -"Do they know what is in your notes and the extent of them?" Do you think they will spend the money to go after you if you don't hand over your notes?
Answer Applies to: Oregon
Replied: 12/5/2013
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
If you signed an assignment document and the assignment document obligated you to cooperate with the client in the prosecution of the patent applications, then it is likely that you are obligated to work with your client including releasing the "notes." However, this problem is complex and the content of the assignment document is important. You're advised to consult with an attorney to at least review any "Consultant-Client" agreement you might have signed with the client.
Answer Applies to: California
Replied: 12/5/2013
    Microtechnology Law & Analysis | Daniel Flamm
    The devil is in the details. It depends on the language of your agreement/contract. For example, you did not say whether the terms provide the company with any ownership or intellectual property rights to your work.
    Answer Applies to: California
    Replied: 12/5/2013
    Law Office of Kirk Buhler
    Law Office of Kirk Buhler | Kirk A Buhler
    You would need to refer to your consultation contract to determine what the company owns. If the company was paying you while you prepared the notes they would probably be owned by the company. You probably don't want to give them up. Just make a copy for yourself of what you want to keep, and send the originals to the lawyer. It will be less expensive and less stressful to you. The intellectual property is in your name, and your designs have probably improved since your notes were created.
    Answer Applies to: California
    Replied: 12/5/2013
    Sebby Law Office
    Sebby Law Office | Jayne Sebby
    The answer will probably depend on the agreement you signed with the company. If this is a work for hire agreement or you were considered an employee of the company in any way, you may be required to turn over the notes. If there is a challenge to your patents, you may want to voluntarily turn over your notes to protect your IP. In most other situations, a consultant's notes would be his or her private property.
    Answer Applies to: Nebraska
    Replied: 12/5/2013
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