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Ask the Lawyer @ Silicon.com
On the first Tuesday of every month, Silicon.com solves your IT law problems. Just send your questions to askthelawyer@silicon.com. This month, Stuart Campbell of UK firm Taylor Joynson Garrett responds to your queries

By editorial@silicon.com

Published: Tuesday 07 March 2000

Q. I have a great idea for a commercial software application, but I'm looking for a new job, and I'm concerned about keeping hold of the intellectual property rights to this software. I am aware that most employment contracts mean that intellectual property rights belong to the company. How can I get around this?

A. The main intellectual property right which you will be concerned with in relation to software will be copyright, which arises automatically and does not have to be registered.

Your concern about the new job is well-founded, though. Usually, copyright is assigned first to the author of a copyright work, such as a software program. However, where such a work is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work, subject to any agreement to the contrary.

This means that, assuming you develop your new software application in the course of your employment with your new company, unless you have an agreement in place with your employer that the copyright in that software will be owned by you, your employer will own the copyright. So you should make sure that your employment contract clearly states that you will own all intellectual property rights in the software, and that agreement should be in writing.

Also beware collaboration. Any copyright in any part of the software written by another employee in the course of his employment - rather than by you - will belong to your new company. So you'll need also need a written assignment of such copyright to you from your new company.

And another warning: there is no copyright in an idea as such, only in the expression of that idea. Copyright for your idea exists only when that application has been written. This means that you are potentially vulnerable if you approach a company with your idea and they decide not to take you on but to exploit your idea themselves. In order to protect yourself against this, it would be sensible to ask any company which you are seeking to approach to enter into a confidentiality agreement with you before you reveal your idea to them. However, some companies are reluctant to enter into such agreements.

If the company has entered into a confidentiality agreement with you and then exploits your idea in breach of that agreement, you may then be able to take action against them.

Q. How will the Government's new ecommerce bill affect online trading? More importantly, is there anything that needs to be done by existing sites to ensure compliance?

A. Despite the Government's stated objective of facilitating trust in electronic commerce, there is nothing in the Bill specifically promoting ecommerce in the United Kingdom.

It is still very early days, but in its current form the Bill does nothing that will require you to rethink the way in which you trade on-line or to make changes to existing Web sites.

The Bill focuses heavily on administrative and regulatory matters, such as the requirements for cryptography service providers, the powers to modify existing legislation, and investigative powers and offences.

So for example, there are currently many statutory requirements for certain documents to be in "writing", such as a conveyance of land, but this does not include electronic writing as the relevant statutes were written when pen and paper ruled supreme. Despite the glaring opportunity to rectify this situation, the Bill only provides for ministers to review legislation requiring documents to be in writing with a view to amending such statutes by secondary legislation.

The Bill's other main provision is the admissibility of electronic signatures in court. Their status in every day and other legal use is, however, still questionable. This is disappointing, as unless users have the confidence to use electronic signatures then the development of electronic commerce other than for non-essential transactions will not occur.

While there are useful administrative and regulatory points in the Bill, much of the detail has been left to secondary legislation.

** Network Multimedia Television Ltd./Silicon.com give no warranties as to the accuracy of the information and advice contained herein and can take no responsibility for any acts or omissions resulting from reliance upon the information provided. Commentary is intended only as general guidance on legal issues arising from the circumstances described, and specific legal advice based on all relevant facts should always be sought.