

Ask HN: Ownership vs licensing my own code. - ordinaryhacker

I am currently working with a company (say ACME) on developing a proof of concept idea. We started working with a premise that if things look promising, I would start my new company and this company would be our first customer and potentially a investor as well.<p>I spend considerable amount of time on this and now when things look promising, CEO of the said company  wants to continue on terms that THEY WILL OWN the code and license it back to me if I want to use it to start my own company later. I will be compensated for the time I spend on working this in some hourly rate fashion.<p>I understand the value of legal counsel but wanted to get opinion of experienced folks here if I should even be heading in the direction of licensing my own code.<p>1. Will this sort of a deal prevent me from using the code to start a company of my own?<p>2. Is licensing the code as licensing the IP? I dont think anything would prevent them from filing patents without including me.<p>3. What's the alternate route?<p>Thank you very much for your advice...
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Talk to a lawyer. IANAL.

If you don't have the initial agreement in writing, you effectively never had
one in the first place. Check your invention assignment agreement in your
hiring paperwork, if you have one. Also, check your states's rules regarding
IP and your employer.

Now, for question 1, building a company off of licensed technology shouldn't
be a problem. However, if you have dreams of an exclusive license, make sure
it's in some sort of agreement.

For question 2, I've thought about this b/c of a situation I'm in right now.
Consult a lawyer. Inventions are invented by people (in the US), and then can
be assigned to a company. If you don't have an invention assignment agreement
and won't sign one, can they arbitrarily name someone else as the
inventor...sure. Then, you might be able to get into a really hairy legal
game, like for example, when the published step forward. I'm not sure what the
outcome will be, so consult a lawyer. Could you rush and file a provisional
ahead of the company? These are the types of games that cost money to play, so
beware.

3\. Move on. It's probably seems like your whole world / future is collapsing
around you. It's not.

