Freelance: Patent Issue

Hey guys,

I know most of us are freelancing. I came to a problem where my client wanted to patent the website I developed. It was a Learning Management System.

The question is: should the patent goes to me or to my client?

This might help…

If it was work for hire, and he now has full ownership of the website and the management system, then I guess he should be the one patenting the site if he really wants to. No point in you having to spend time, money and hassle when he gets all the benefit. Or you could handle it ‘for a fee’ and then transfer the patent to him.

I definitely wouldn’t advise you holding the patent without officially transferring it to him… then he’ll be calling you up every time he wants to try and sue somebody. But still, the article above gives the impression that it’s not really worth it at the end of the day.

I’m pretty sure there might be some serious considerations around licensing if the system that you build is based on a theme or template from envato.

What’s your advise? Should he just trademark his company, but not on the website development itself.

Is whatever you built based on a file from envato?

Assuming there’s not licensing issues then @SpaceStockFootage is 110% right - the entire process and any associated costs or issues should come down to the client and become their concern.

You can definitely charge a retainer for maintenance etc. but you don’t want to end up with responsibility for something that is not technically yours or completely in your control

Some codes are based a file from envato and it’s my concern that he even think to patent the website.

Is it alright if I told him to patent his company only but not the website itself?

That’s really a question for a lawyer and not something which community forums embers will have 100% clarity on.

From an envato perspective, there are license restrictions about redistributing items, code esp in terms of software and even more if the license was purchased by you and not by the client. I would begin by talking to support and make sure that this is even ok within the envato licenses

Thank you for your suggestion. I’ll ask the Envato support for it.

It’s probably unlikely. Imagine if the client sues the author of the file for using his patented code… the author wouldn’t be very happy!

I really don’t want him to patent the whole development. I began to explain to him clearly about the whole situation hopefully the client really understands how the whole patent works.

As long as he knows the full situation then I guess you’ve done your part… it’s then up to him what he does with that information.

Thank you guys for all of your information and guides.

There has been some issues with AudioJungle/VideoHive before. Sony, I think, they have taken the ownership of the template ( video/audio ) and after a while, the original author has been informed and the video/audio has been removed from the YouTube. Authors have contacted the company and after a while, the issue was fixed.

You have the same issue here with someone else’s code. My opinion, do not waste time to try to patent the website - I don’t think you’d be able to anyway. Instead of, trademark the company instead.

That’s shocking. I already told my client and everything and I think he gets it. I said he can only trademark his company but not the website.