Patentanwalt Dr. Betram Rapp

by Dipl.-Phys. Dr. Bertram Rapp

Patent attorney Dr. Bertram Rapp, Charrier Rapp & Liebau

Product design: What applies after conclusion of the contract?

After the end of a contract between a designer and his client, several questions arise. What needs to be considered and how copyrights are structured.
B4B reader asks:

We have been doing product design for a client for many years. The contract is now expiring and the designer would like to acquire the rights to his work – these are currently held by the customer. Firstly, is that possible? Second, does that make sense? Third, do we as contractors have to do some kind of intermediary or is a direct transfer possible?

Dr. Bertram Rapp of CHARRIER RAPP & LIEBAU, our expert on patent issues, answers:

Rights to the designs created by your hired designer can be copyrights, registered and unregistered designs, i.e. designs, as well as ancillary copyrights under competition law. These rights are currently held by your client, either by appropriate contractual agreement or under the so-called transfer of purpose doctrine – whereby as many rights are transferred to the client as are necessary to fulfill the contractual purpose.

Risk of the designer alienating rights

The customer has obviously used the rights to the designs for its products. Against this background, it is unlikely that he will transfer these rights back to your employee. This would then create the risk that the designer would sell or license these rights to a third party – for example, a competitor of your customer. Of course, this could be contractually excluded, but it seems unlikely that the same product design could be used for a completely different product that is not in a competitive relationship with the customer’s products.

Retransfer possible but not often useful

In principle, a reassignment of the design rights from the customer to the designer is therefore possible, but is likely to make sense and actually be carried out only in the fewest constellations. The transfer can take place directly between the customer and the designer. However, from the customer’s point of view, it would be helpful to have the transfer agreement approved by you and to ensure that no rights to the product designs have remained with your company.

Do you have any questions for patent expert Dr. Bertram Rapp, or would you like more in-depth advice?

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