The rules for determining ownership of trade secrets and patentable inventions by ICs are essentially the same.
1. Inventions and Trade Secrets Created by Workers
Whenever you hire any worker to create or contribute to the creation of a patentable invention or information or know-how you wish to maintain as a trade secret, it’s vital that the worker sign an agreement transferring his or her ownership rights to your company. This is so whether the worker is an employee or IC.
Such an intellectual property ownership transfer is called an assignment. It should be in writing and signed before work begins. It is common practice among high-technology firms and other businesses that create patentable inventions or valuable trade secrets to have creative workers sign such assignments. (See Independent Contractor Agreements for information about creating an assignment.)
In the absence of a signed assignment, you can still obtain ownership of any inventions or trade secrets an IC creates on your behalf, but you may be in for a costly legal dispute. You’ll have to prove that the worker was hired to develop a specific product or to help create inventions for you.
2. Revealing Trade Secrets to Third Parties
When you hire ICs to perform services for you, it is sometimes necessary for you to reveal to them sensitive business information that you don’t want your competitors to know. For example, it may be necessary to reveal highly valuable customer lists to an IC salesperson.
Even in the absence of a written agreement saying so, ICs probably have a duty to keep such information confidential. But just to make sure, it’s wise to include a confidentiality clause in an IC agreement providing that the IC has a duty to keep your proprietary information confidential. (See Independent Contractor Agreements for information about confidentiality clauses.)