Does "in the course of providing services" mean "during the same time
as providing services" or "for the purpose of providing services" or
something else?
I ask because I am a programmer who will be working on my own project
during the same period as I am providing services to this Client, but
after-hours and not for the same purpose or business. I want to make
sure that what I create for myself I will own.
The best definitions that come to mind off the cuff are "related to" and "in connection with", and both of those phrases appear in the same sentence, so that is quite close to the mark.
Black's Law Dictionary (5th edition 1979) (from my hard copy edition) defines "in the course of employment" as follows (citation omitted):
The phase "in the course of" employment, as used in worker's
compensation acts, related to time, place and circumstances under
which accident occurred, and means injury happened while worker was at
work in his or her employer's service.
Dictionary.com defines "in the course of" as:
during the course of. In the process or progress of
The best definition I gleaned from relevant case law is as follows:
[A]n invention made or conceived in performing, or as a
result of performing, the work required by a contract is made or
conceived "in the course of" that contract. That would be true even
though the invention was not specifically sought in the terms of the
contract. An invention is made or conceived "under" a contract when it
is made or conceived during the life of the contract and the invention
is, in whole or in part, specifically provided for by that contract.
Fitch v. Atomic Energy Commn., 491 F.2d 1392, 1395 (Cust. & Pat. App. 1974).
The law which forms the background against which the contract term in question is drafted is discussed in the following language from a Federal Circuit patent law case:
The general rule is that an individual owns the patent rights to the
subject matter of which he is an inventor, even though he conceived it
or reduced it to practice in the course of his employment. There are
two exceptions to this rule: first, an employer owns an employee's
invention if the employee is a party to an express contract to that
effect; second, where an employee is hired to invent something or
solve a particular problem, the property of the invention related to
this effort may belong to the employer. Both exceptions are firmly
grounded in the principles of contract law that allow parties to
freely structure their transactions and obtain the benefit of any
bargains reached.
Banks v. Unisys Corp., 228 F.3d 1357, 1359 (Fed. Cir. 2000).
A similar contact is applied in the case Greene v. Ablon, 794 F.3d 133, 142 (1st Cir. 2015), but the term was not defined or disputed in that case. This case is still useful, however, for purposes of seeing the kind of issues that are typically raised in a case like this one and to assure yourself that the contract probably is enforceable.
For the purposes of this question, the difference between an employee and an independent contractor is immaterial.
