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abc1111
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Invention confidentiality
« on: Nov 10th, 2007, 3:01pm »
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I am developing a product for my start-up with a couple of people who have only signed an NDA.
The NDA is only preventing them to go outside talk about my start-up confidential information or start their own business with my idea.
HOWEVER, it does not prevent them to claim rights for what they are building/inventing right now in several years if the company does well. Of course, I will provide them some compensation, but it will be a fixed amount for this project. I am not planning to provide them "royalties" on my product.
 
What should I have them sign to make sure their rights on the product are waived? What is the name of this document? Where can I obtain it?
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patentsusa
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Re: Invention confidentiality
« Reply #1 on: Nov 10th, 2007, 11:37pm »
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An employment agreement or independent contractor agreement, as well as an assignment of intellectual property rights including at least copyright rights, and possibly a waiver of any moral rights.  The reason why I mention copyright specifically is that copyright rights in software belong to the software designer absent an agreement to the contrary.  An employer often owns patent rights automatically, but not copyright rights.  If there is anything arguably artistic in the work, you'll want a waiver of moral rights (e.g., so you can destroy or modify the work without permission).
 
As employment law varies from state to state, you should seek out a competent lawyer in your state.
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Deepak Malhotra, JD, BSEE
Registered Patent Attorney
Malhotra Law Firm
www.patentsusa.com
Bill Richards
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Re: Invention confidentiality
« Reply #2 on: Nov 13th, 2007, 8:35pm »
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on Nov 10th, 2007, 11:37pm, patentsusa wrote:
An employer often owns patent rights automatically, but not copyright rights.

Huh?  How does that happen?  Automatically?  Under what theory?
 
Quote:
As employment law varies from state to state, you should seek out a competent lawyer in your state.

Correct.  And, there's the ever-present "hired-to-invent" issue.
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
abc1111
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Re: Invention confidentiality
« Reply #3 on: Nov 15th, 2007, 5:14pm »
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They are friends not employees.
Should have them just sign an NDA + assignment of intellectual property rights Huh
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same_situation
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Re: Invention confidentiality
« Reply #4 on: Dec 1st, 2007, 3:01am »
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Experienced law gurus,
 
My situation also mirrors what abc111 is in. However,
there are differentiators too
 
a) My team (friends) also shall be a part of the team when  
funded. Yes, they are employed else where but spare  
time over weekends. The future positions/roles are already
determined, but equity distr is a bit open to negotiation.
I plan to provide std packages to them that we find
traditional in the industry. Now my real nightmare is
what if negos fail? Currently I have NDAs with them..
 
 
b) So far, IP and prdt dev are the ones I kept to myself
but cant keep them away for long Smiley
 
In this situation what would be my best ways to keep
prdt and IP safe from future  hassles. I trust my team,
but still want to play safe.. I am in mid south state.
 
Would deeply appreciate if any insights/dierctions are  
provided.. Thanks!
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