IP Titbits: Commissioning software developers

Our previous series on Intellectual Property Rights (IPRs) explored key aspects of Software Licensing Agreements. In this episode, we will highlight important considerations for commissioning software developers.

In the modern digital landscape, establishing an online presence is vital for any business entity. Software developers play a critical role in this process and are often independent from the business itself. To create a reputable online identity, a business must engage a software developer, either through a partnership or as commissioned work. Generally, the specifics of the project or service dictate the nature of the collaboration between the business entity and the software developer.

This segment presents a scenario in which a business entity, referred to as Kubwa & Company’ Advocates, commissions a software developer to carry out a defined task aimed at enhancing its digital presence and operations.

A key point to note is that the background information and overall branding are the responsibility of Kubwa & Company’ Advocates. They guide the project and oversee how the final product should look and feel. This is particularly important because Kubwa & Company’ Advocates likely has established themes and colours, as well as a specific image they wish to convey to their diverse audience in the digital space. The software developer is compensated for producing the foreground information, data, or results.

It is essential to recognize that the digital realm is expansive and crosses various cultural and religious boundaries. Therefore, it is imperative for Kubwa & Company’ Advocates to retain the rights to shape their brand identity, effectively engaging with their multifaceted clientele.

When Kubwa & Company’ Advocates engages a software developer, it is imperative to ensure that the contract encompasses at least the following five key elements:

First, the contract should clearly stipulate that Kubwa & Company’ Advocates will hold all copyright and related rights to the software or commissioned work produced. While the commissioning entity typically retains rights to background information, the foreground information is obtained from the software developer upon full compensation for their contributions to the final product.

Second, the software developer must provide a guarantee that they will not reverse engineer, decompile, or disassemble any software that involves third-party intellectual property rights during the development process for Kubwa & Company’ Advocates. Furthermore, the developer is required to warrant that the content, source code, and any other elements of the software do not infringe upon any third parties’ copyrights or trade secrets. As previously noted, software code is protected by copyright law in Kenya and by patent law in other jurisdictions. Unauthorized use of third-party protected rights may result in liability. Thus, this guarantee serves to protect Kubwa & Company’ Advocates from potential third-party claims related to intellectual property infringement. The contract should include a clause obligating the software developer to indemnify Kubwa & Company’ Advocates against any claims and losses arising from or relating to any actual or alleged infringement of third-party intellectual property rights.

The third aspect to address is that the software developer must relinquish and waive any objection rights concerning future alterations, distortions, mutilations, or modifications of the resulting software or associated intellectual property rights. This is of significant importance, as the end product, as previously indicated, is wholly owned by the commissioning entity, Kubwa & Company’ Advocates. Consequently, Kubwa & Company’ Advocates should retain the rights to utilize and upgrade the product as deemed necessary. The absence of such a clause may permit the developer to assert objection rights concerning future modifications and to claim ownership over more advanced iterations of the resulting software.

Moreover, it is imperative that the software developer agrees not to assert any claims to rights concerning the project, nor to apply for registration, usage, or challenge the validity of any resulting intellectual property for personal benefit or that of any third party.

Fourth, the software developer must commit to providing technical support to Kubwa & Company’ Advocates upon request throughout the registration process of the resulting product. This support is essential for satisfying registration requirements, which include obtaining the developer’s acknowledgement and consent, as well as detailing the sequence of codes utilized. In critical cases, unconditional consent should be documented as part of the project completion materials.

Finally, it is essential to prohibit the software developer from any further use of Kubwa & Company’ Advocates intellectual property, including that which is outlined on its website, as well as any other bespoke intellectual property. The contractual agreement should expressly mandate that the software developer either return or destroy all materials in their possession that bear the Advocate’s intellectual property. It is advisable that the cessation of use and the return of the commissioning entity’s intellectual property be integrated into the project completion requirements, ensuring that this is executed upon the successful implementation of the software within the specified timelines.

That’s it for today. Do not shy away from protecting your IP through us. We will negotiate and protect your intellectual rights either as a developer or a commissioning entity. Talk to us now by Scheduling a Meeting Here or direct chat on WhatsApp Here or by clicking on the live chat in the bottom right corner.

Should you require more information, please do not hesitate to contact [email protected].