I have tried this several ways over the years. Only once did I sign a
similar assignment and come out OK - only because the assignee turned out to
be a real stand-up guy, whom I still work with after doing several patents
together. I would never do it that way again, however. The two most recent
occasions in which I had to decide on similar agreements, I was a bit more
firm.

In any case, I wouldn't even attempt to execute an assignment until after
hearing the results of a patent search. Only then will you know what you
have your arms around. If the assignee if in a hurry to do this prematurely,
either he already knows the real value of the invention, or he's just
working according to a standard shark plan that gives him all the power from
the start. It may be a financier's first line of protection for the money
he's about to dump into a patent application.
In one deal, I insisted that terms of compensation be clearly defined in a
separate agreement, and that document was referenced in the modified
assignment. The second time around, I insisted that I be added as a
co-assignee with specific rights and equity in the invention. In other
words, I agreed to assign the right to use the invention as long as I could
decide to use it myself also. I was an assignor and one of the assignees at
the same time. This method worked best - Think about it - you could work
according to the handshake agreement as long as YOU like. If somebody starts
to jerk you around at some point in the future, or, as is more common, if
they tell you at some point that you're not being paid much because the
venture is just not profiting- even though you know it should be - you could
remind them that you have the right to the invention yourself, and that you
could re-package it, or re-market it in a way that would sell....

And, if for no other reason than to avoid giving up all control, by all
means, modify the document so that it either protects your rights to
something you want out of the deal, or draft another to compliment this one
that will spell out whatever particular rights and compensation you want to
define.

If I'm not mistaken, your work was and is an invaluable contribution to the
whole. The guy with the idea and the one that puts up the $$ couldn't make
the thing work on their own - they need you. If you couldn't bankroll it or
come up with the marketable idea on your own, you need them. Why should your
contribution be worth the smallest percentage? Your effort should be worth
just as much as anyone else's.

Finally, you don't mention what your 10% gets you. It may be personal, and
doesn't need to be shared. It does need to be defined. Even 2 x 10% in
voting power gets you nothing in this situation. I hope there's more to be
defined in this area for your sake.

It may seem tough, but I always prefer to be most firm when first putting
together these deals. Then I can be calm and agreeable more easily
afterward.

Chris


> -----Original Message-----
> From: pic microcontroller discussion list
> [mailto:PICLIST@MITVMA.MIT.EDU]On Behalf Of Jinx
> Sent: Thursday, April 18, 2002 7:27 PM
> To: PICLIST@MITVMA.MIT.EDU
> Subject: [PIC]: Assigning s/w and circuit copyright
>
>
> I need to sign off on this document
>
> http://home.clear.net.nz/pages/joecolquitt/assign.html
>
> Any comments or suggestions re implications, ramifications
> or other -tions. As I read it (hopefully correctly), makes my work
> company property, which I don't particularly have a problem with
>
> Company situation is
>
> 2 x 10% shareholders (myself and another) - product developers
> 1 x 22% shareholder (financier)
> 1 x 58% shareholder (idea originator, sole director, marketer)
>
> --
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>

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