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Ask HN: I've been asked to sign a IP Assignment Deed as an employee

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Ask HN: I've been asked to sign a IP Assignment Deed as an employee

#1

Post by mordrax »

So I used to work for a company, being one of two employees that created a piece of software.

I was hired as an employee of the company with no share holding, and signed a fairly standard contract where my time and anything I created during the time I was employed belonged to the company.

Just recently, the company is selling it's product and the purchasing company has asked that all employees sign a IP Assignment Deed.

My understanding is that, since I've already assigned all IP to the company that I worked at, I don't have any legal rights to assign my IP to this new entity... well because, I don't actually own any of it.

Is it common for past employees (not shareholders or founders) to have to sign these when products are being purchased? I was made redundant 2 years ago.

Re: Ask HN: I've been asked to sign a IP Assignment Deed as an employee

#3

Post by sokoloff »

First of all, you don't HAVE to sign anything now. It is very common in due diligence to try to chase down details like this.

If you feel like cooperating, but are just uncertain of your standing, you can sign a quitclaim assignment, essentially stating that whatever IP claims that you might have (which might be none), you assign to the new entity.

If you don't feel like cooperating, you could ask for compensation now in exchange for signing or just tell them to cram it with walnuts.

Re: Ask HN: I've been asked to sign a IP Assignment Deed as an employee

#4

Post by mordrax »

deedubaya wrote: post #2

If you're no longer employeed by the selling company, it would seem that you have nothing to gain by signing.

I guess my angle isn't: What is there to gain for me. Even though I was made redundant, the employer is nice and I'd have no problems signing it.

But it's the first time I'm asked to sign one of these things and some of the things I'd be agreeing to doesn't even sound like it's in english. I don't want to inadvertently sign over any side project I was working on in that time or IP for the industry I was working in or even future IP as some of it seems to be worded without time constraints. But take all that with a grain of salt, no legal background.

The sale of the business is predicated on all former employees signing the deed.

Re: Ask HN: I've been asked to sign a IP Assignment Deed as an employee

#5

Post by xenadu02 »

mordrax wrote: post #4
deedubaya wrote: post #2

If you're no longer employeed by the selling company, it would seem that you have nothing to gain by signing.

I guess my angle isn't: What is there to gain for me. Even though I was made redundant, the employer is nice and I'd have no problems signing it. But it's the first time I'm asked to sign one of these things and some of the things I'd be agreeing to doesn't even sound like it's in english. I don't want to inadvertently sign over any side project I was working on in that time or IP for the industry I was working in or…

This is all risk for you... why would you take on that risk with no compensation for an employer that fired you?

Re: Ask HN: I've been asked to sign a IP Assignment Deed as an employee

#6

Post by gregmac »

It seems like you have nothing to gain, but potentially something to lose by signing. On the other hand, do you have anything to lose by not signing?

IANAL, but from your description it does indeed sound like you have no IP rights to assign.

If they really want you to sign anyway, and you are ok with the terms, at least get compensation for it - that at least gives you an upside.

Re: Ask HN: I've been asked to sign a IP Assignment Deed as an employee

#7

Post by sokoloff »

mordrax wrote: post #4
deedubaya wrote: post #2

If you're no longer employeed by the selling company, it would seem that you have nothing to gain by signing.

I guess my angle isn't: What is there to gain for me. Even though I was made redundant, the employer is nice and I'd have no problems signing it. But it's the first time I'm asked to sign one of these things and some of the things I'd be agreeing to doesn't even sound like it's in english. I don't want to inadvertently sign over any side project I was working on in that time or IP for the industry I was working in or…

You should feel free to draft alternative language that you are comfortable signing. It's then up to the lawyers and bankers in the deal to figure out if that's good enough for them.

What they're trying to guard against is an Oculus Rift type situation. You signing a clear statement of "mordrax has no further interest in any IP that's part of this deal" is probably good enough for them. You don't have to sign exactly what they put in front of you, especially if you can't understand it.

Re: Ask HN: I've been asked to sign a IP Assignment Deed as an employee

#8

Post by bthornbury »

mordrax wrote: post #4
deedubaya wrote: post #2

If you're no longer employeed by the selling company, it would seem that you have nothing to gain by signing.

I guess my angle isn't: What is there to gain for me. Even though I was made redundant, the employer is nice and I'd have no problems signing it. But it's the first time I'm asked to sign one of these things and some of the things I'd be agreeing to doesn't even sound like it's in english. I don't want to inadvertently sign over any side project I was working on in that time or IP for the industry I was working in or…

Don't feel pressured. Sounds like you're trying to do the right thing and should be worried about signing an agreement you don't understand.

If you're worried, get an attorney (who understands software IP) to read it. Get the company to reimburse you for the attorney fee (and maybe your time).

Re: Ask HN: I've been asked to sign a IP Assignment Deed as an employee

#9

Post by ams6110 »

mordrax wrote: post #4
deedubaya wrote: post #2

If you're no longer employeed by the selling company, it would seem that you have nothing to gain by signing.

I guess my angle isn't: What is there to gain for me. Even though I was made redundant, the employer is nice and I'd have no problems signing it. But it's the first time I'm asked to sign one of these things and some of the things I'd be agreeing to doesn't even sound like it's in english. I don't want to inadvertently sign over any side project I was working on in that time or IP for the industry I was working in or…

I would refuse to sign without hiring an attorney to review it. That will cost you something but at least you will know what you are signing.
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