Intellectual property rights

[zul]

What is the name of your state? North Carolina

I have two questions about Intellectual Property Rights. Any help would be greatly appreciated.

A contractor has agreed to do some work for me for free. I have put together a non-disclosure document and also an inventions and property rights document that he has agreed to sign. In this document, the person assigns all rights, to the company, for any inventions realized during company time and/or using company property and/or when the contractor is being paid for by the company. The only hitch is that there is no payment being made. So my questions are: If the contractor is working for free, then can I still own the rights of the inventions and what is the best way for me to protect the IP?

Thank you.

 

[divgradcurl]

The problem here, as you probably recognize, is that your "contract" to assign all IP rights to the company has no consideration involved -- usually when an employee or contractor signs one of these types of documents (and they are very common, of course) they are getting paid for their work, which satisfies the consideration requirement to make a contract binding.

Even then, some companies go further to protect themselves and provide some payment and language to ensure that there is no issue with the legality of an assingment -- I've seen some companies (IBM comes to mind, not sure if they still do this) make the employees when they submit an invention disclosure sign a document which basically says "for $1 and other good and valuable consideration, I hereby assign my ownership rights to..."

It would _probably_ be sufficient for you to change the IP document to say something like "for $XXX and other good and valuable consideration, XXX assigns all rights, to the company, ..." and then actually pay him the $XXX value. If you have any inkling that he or the company might come up with something valuable, definitely talk to a lawyer and have him draft up something for you.

 

[zul]

Thank you

Thanks for the insights. This is helpful.

Zul