Intellectual Property
by Derrick Koenig

Who Owns the Design of Your Industrial Facility or Municipal Installation?

It is hard to believe, but after paying thousands (or often millions) to their engineering service providers, most paying customers know that they own the actual final facility but don’t truly understand if they own the final ‘design’. Don’t be embarrassed, this is one of the most asked questions by our customers as only a small few are often privy to the contracts associated with their projects. While we are not able to comment on the ownership of your design, we can provide some clarity around the factors to consider when establishing design ownership.  The good thing is that it is not really that complicated.
There are typically two aspects to consider when establishing ownership:
1) ownership of copyright and,
2) ownership of drawings and related documents.
In most jurisdictions around the world, the author of professional documents that are subject to copyright is the first owner of copyright in the documents. However, if those documents were created by the author in the course of his or her employment with an engineering firm, absent an agreement to the contrary, the first owner of the copyright will be the employer, i.e. the engineering firm. Furthermore, the subsequent contracts between engineering firms and their customers may transfer or license copyright to the paying customer.  Thus, in most cases the copyright associated with typical industry projects belongs to the ultimate paying customer.
The ownership of drawings and related documents in most jurisdictions is defined by the contract between the professional (engineer, architect, etc.) and the customer.  However, like copyright ownership, contracts between engineering firms and their customers generally transfer this ownership once again to the ultimate paying customer.

Company Owned Designs are Free to Sell or License 

Thus, in most cases ‘ownership of the design’ resides with the ultimate project / facility owner, i.e. the paying customer, which most would agree makes sense.  However, there are some situations where this may not be the case and thus it is always best to check with your company’s legal team. For example:
  • When the author of work created for an engineering firm is not an employee of that firm in which case the engineering firm is not the owner of the copyright unless the author has transferred it to the firm in writing or
  • When work is carried out outside of a formal contract between the engineering firm and the ultimate paying customer or
  • When the design includes licensed technology from a 3rd Party
If your company owns its design, then it is free to sell or license that design as a method of recovering some of the original engineering costs.  For a consultation on the value of your facility design and / or to list your design for purchase, contact us at www.gobydesign.com.

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