
Ask HN: I've been asked to sign a IP Assignment Deed as an employee - mordrax
So I used to work for a company, being one of two employees that created a piece of software.<p>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.<p>Just recently, the company is selling it&#x27;s product and the purchasing company has asked that all employees sign a IP Assignment Deed.<p>My understanding is that, since I&#x27;ve already assigned all IP to the company that I worked at, I don&#x27;t have any legal rights to assign my IP to this new entity... well because, I don&#x27;t actually own any of it.<p>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.
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iaw
In order for a contract to be considered enforceable both parties must receive
consideration[1]. When you worked at the company your consideration was
continued employment.

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...](http://study.com/academy/lesson/rules-of-consideration-in-contract-law-
elements-case-examples.html)

~~~
ajdlinux
The words "IP assignment deed" would suggest it's a deed, not a contract, and
a deed does not require consideration (though it may include some
consideration that allows it to be enforced as a contract if a court finds
that the requirements of a deed were not met)

(IANAL, I've had to get lawyers to write up IP assignment paperwork before
though)

~~~
iaw
I was not aware of this fact. IANAL, but it does look as if the concept of a
deed is being abused in this context.

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.

~~~
cmdrfred
>using the legal tools available to you is not immoral

Legality and morality are two different concepts that are not always mutually
inclusive. What would be the point of two separate words if this wasn't the
case? Under your logic slavery wouldn't slavery have been moral?

That said the people OP is dealing with arent likely at the height of morality
themselves and my personal moral code is "do unto others as they would do unto
you".

~~~
iaw
Thank you for highlighting this, you are completely correct. The "rule of
thumb" was not a moral law to follow.

I lack the eloquence at the moment to reformulate my statements other than to
say that in financial interactions between humans and companies people tend to
treat companies like they would other people while companies tend to treat
people like they would other companies.

------
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.

------
ChuckMcM
In general, there probably isn't an issue. However, it is very important that
you understand anything you sign. In IP assignments the thing I am most
careful about is the indemnification clause or clauses. It is fairly
boilerplate to include language that says "you assert that you have the right
to sign off this IP, and if someone later challenges that right you will
indemnify they buyer against any infringement action brought against them."

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.

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bb88
Some people have mentioned that you might want to stay on good terms with the
company.

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.

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raleighm
(Not legal advice.) M&A practitioners aren't paragons of virtue but still it'd
usually be considered uncool to go to a former employee years after the fact,
ask them to sign a doc to facilitate a deal he'd get no upside from, and not
offer to pay his legal fees - especially if he's someone the company let go.
It's possible this is just a junior associate at the purchaser's law firm
insisting on something technically correct but practically low-risk, getting
poor supervision, and your former company not shielding you as they should.
It's also possible that if the company tells the purchaser you don't want to
sign it, the purchaser just says "ok was worth a shot" and that's it. If the
purchaser truly does care, it's the company's problem not yours that the
documents you signed years ago weren't different. Not something you should
incur time, expenses or risk now to fix for them. An example of risk is the
scope of the deed being too broad and covering other projects of yours that
should be out of scope. You can say no with a clear conscience. If you feel
bad about it, something like the following is a totally fair response: "Sorry
I can't be more helpful, but I take legal documents seriously and don't
review/sign anything unless it's necessary for something I'm currently working
on. It's just a personal policy of mine."

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colin1006
If I were in your situation (where I liked the company, and had decided that I
didn't want to try to ask for a portion), say that you're not going to sign
anything without having a lawyer look over it with you, and ask them to
reimburse you for your lawyer. That way if they need you to sign it, then they
can pay for your trouble, and you can find out if there's anything important
and get all of your legal questions answered (including finding out if you
have any bargaining power). If they don't need you to sign it, then they won't
pay for your lawyer, and you can go on without signing something you don't
understand.

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kstrauser
Did they voluntarily sign any nice contracts for you when they fired you?
Sure, your manager was cool and you liked your coworkers, but the company
itself fired you. Call it "laid off", "rightsized", "RIFfed", or whatever you
choose, but the end result is the same: you were out on the street.

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?

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

~~~
mordrax
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.

~~~
xenadu02
This is all risk for you... why would you take on that risk with no
compensation for an employer that fired you?

~~~
tempestn
There is something between doing it out of the goodness of your heart and
milking them for all they're worth though. He could reasonably ask that they
pay his legal fees and compensate him for his time dealing with this. (A
couple hundred an hour, say, or whatever he feels is reasonable.) Then choose
a good IP attorney to look over it. That's based on the fact that he says he's
on good terms with the previous employer and would like to help them out.

~~~
dvfjsdhgfv
This is the most reasonable solution and I hope the OP chooses it.

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jason_slack
You were made "redundant" 2 years ago.

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.

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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.

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salsakran
Chances are they messed up the paperwork somehow. Either the agreement you
signed wasn't acceptable to the buyers or they just lost them.

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.

------
mordrax
Thank you all for the wide range of thoughtful responses.

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.

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sauronlord
This sounds like work to me. Best to provide an estimate and send them an
invoice for this project.

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.

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mongol
What is in it for you? I can not see a reason to bother.

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Illniyar
They want you to sign something after you left? Don't be a fool, you shouldn't
sign anything.

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.

~~~
mdotk
agreed, why sign anything after you've left. you don't owe them jack

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ImTalking
Not a chance. The terms of this new deed may be more onerous than the original
employment contract, and might land you on trouble if, for example, you did
some programming outside of this company while you were employed.

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dontJudge
They are probably following a process on autopilot. Maybe just being extra
safe, covering all their bases.

Just ignore it until they offer money for your supposed IP.

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amorphid
If you don't own any of it, at least in your mind, it's interesting that
someone is selling the software that you don't own, and asking you to confirm
that. If it wouldn't cost you anything you care about, consider countering
with "to save time, make me your best offer." See what they do!

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solidsnack9000
> 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...

This seems basically right. I would ask them, was something wrong or
incomplete about the previous agreement?

