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.
Were I in your shoes I'd ask for an amount of consideration with what you believe is commensurate with a "reasonable" value. If this is a small sale, something like $10,000. If it's a large sale, $100-200,000.
The point being that if they want you to sign away your ownership rights (real or imagined) they have to give you something in return or it's not a legal contract.
Contracts absolutely require that both parties get something of value out of the exchange.
[1] http://study.com/academy/lesson/rules-of-consideration-in-co...
(IANAL, I've had to get lawyers to write up IP assignment paperwork before though)
Kind of like where employers call employees "contractors" because they can get away with it. It looks like the purpose of a deed is to announce intention to uphold a promise such as debt repayment in exchange for title.
The idea of a deed of assignment (from googling) is that one party transfers ownership of an object to another party. If OP's earlier contract was valid then this would be extraneous, if OP's earlier contract was flawed then it would be in his/her best interest to negotiate a new contract as a deed would basically be giving away the vested interest they have.
Anyone that makes a moral argument here needs to remember that using the legal tools available to you is not immoral. It may be mean, but it's fair play. Bill Gates and Spyglass, as atrocious as it was, demonstrated this. If the original contract was flawed, then OP actually owns some vested component of the company/product.
Why in the world would OP give away something that has literally just been assigned a value for free? Frequently companies, if in the situation of OP, will leverage their legal rights in this scenario.
I still think OP should negotiate some compensation for anything they sign.
(I'm providing legal information, not legal advice; hire a lawyer and please don't rely on legal advice you get from comment sections; if you truly want to avoid lawyers and do it yourself, I would suggest reading E.A. Farnsworth's "Contracts")
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.
That is what is think of as an "open ended" indemnification which is to say, you sign this over, then later someone sues them for patent infringement. Even though you had no idea somebody had patented the idea, you might be on the hook to pay the legal costs or licensing fees to make the buyer whole again.
So make sure the document doesn't say indemnify anywhere :-) And as others have said consider having a lawyer look at it.
The problem is that you're dealing with lawyers, and they want only one thing. They don't really care about you once they have what they want.
The other problem for them is that your legal relationship ended when your employment ended. So they don't have any power, other than what you choose to give to them.
I'm guessing they lost the original contracts and need the Deed to be on solid legal ground.
So I'd make them squirm a bit.
What are they willing to do for you, now that they're asking a favor? I'm not trying to be a hardass, or suggest you try to retire off this one thing. But obviously it's valuable to them or they wouldn't be asking. Why should you - who they fired - do them a large financial favor for nothing?
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.
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.
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).
Turn it around and tell them your needs: you don't want to lose rights to your own work. Leave at that at first, and see if they come back with anything, such as a list of the specific works they want you to disclaim prior to their acquisition.
You get the open end, not them.
And charge them for laying you off, I assume you don't have equity that will act as any kind of redemption in the sale.
The usual way to deal with side projects is to specifically list the things you own and want to protect that should not be included. This is often a very small set of identifiable things. If you're worried this might be an overly broad set, then you can go the other way and try and list all the work you did while there. They will then need someone to review it to make sure that's everything they need, and then the buyer will need to review it to make sure that's everything they want. If this is an asset transfer, they will also need to make another list which is the things they are specifically not buying. So you make things more complicated doing it that way, but it's certainly your right to do that since they don't have an agreement with you already. Their fault for not giving you something when you started.
You don't owe your past employer anything and you sure as hell don't owe anything to a company trying to minimize their headache in the future if something with their deal with your past employer has a hole in it.
I'd just wash your hands of the whole thing and ignore it. If they come back with some $$ then perhaps revisit. Life is to short to be wasted being a 3rd wheel.
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.
I would definitely run it by a lawyer before you sign anything.
It's unlikely they're being nefarious, but realize that you'd be doing them a favor. It's up to you to decide if that's something you'd want to do.
I don't want to leave the impression that this company with a private owner is a bad company. The employer did look out for me when I had difficult family issues and at one point, being way over-burdened with the workload, I told him to either fire me and get a support person at half my salary or give me more resources.
Being laid off there was quite good for me. I felt indebted to keep the product afloat but it was burning me out constantly so after I left, I got a higher paid, much more reasonable hours job with peers that also have passion for coding.
But I still remembered him looking out for me so I want to do the right thing and help him get some closure on this business. To that end, I think getting a IP lawyer to put any of my worries to rest at a small expense to him or the purchasing company is the most reasonable option as someone else had said below.
200/hr with minimum billing increment of 2 hours PLUS legal expenses to even understand what the heck it is they want you to sign.
Easily a 4-8 hour gig. $800-1500 is a reasonable price to be paid for such a job.
Its a hit and miss tactic, some will sign and the lawyers will have a little bit more gurantee, but many won't and it will not hold up the sale.
Just ignore it until they offer money for your supposed IP.
This seems basically right. I would ask them, was something wrong or incomplete about the previous agreement?
