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I'm trying to decipher the Proprietary Rights section of a contract I've been asked to sign. 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 full section states:

Any and all inventions, discoveries, improvements, software, intellectual property and other works of authorship or creations (collectively "Creations") which the Contractor or Contractor's Agents have conceived or made or may conceive or make in the course of providing Services that are related to or connected with Client's business activities shall be the sole and exclusive property of such Client.

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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 har 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.

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    Thanks. If I understand you correctly, with the terms as-is, they would be able to gain the rights to anything that I work on during life of the contract. If I asked them to change the wording from "in the course of providing Services" to "for the purpose of providing Services", do you think that would be sufficient for me to preserve the rights to my own project? – adam0101 Jul 3 at 19:44
  • @adam0101 Hard to know. – ohwilleke Jul 4 at 0:13
  • Thanks for your help. I got the contract revised to say "for the purpose of providing Services". I'm going to sign and hope that it's good enough. Still, even though it's hard to know, I'm curious what your best guess would be. – adam0101 Jul 4 at 1:25

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