Legal Question in Technology Law in California

Re: Technology Intellectual Property/Asset transfer agreement

You probably think that your planned approach will save you money. It probably won't.

An attorney who is competent to handle this kind of transaction will have forms with which he is already familiar; it takes relatively little time to adapt one to a particular transaction. If you bring a completely new form to a lawyer, he is likely to have to spend more time closely analyzing it (the more so because it is "customized" by the non-lawyer client) than it would have taken him to put your business terms into his form.

Besides, you will probably get the job done better if you let the lawyer do his job and you deal with the business issues.

Re: Technology Intellectual Property/Asset transfer agreement

There are many, many places to get sample agreements.

You can use an existing agreement, which is what your lawyer is likely to do; you can ask your business partner/his lawyer for one. Check out a few websites, as basic forms may even be on-line.

You can look for agreement guides by Milgrim which should be at your local public university law library,--or in their databases if they don't themselves have a copy. Milgrim is an expert referenced worldwide, but his guides aren't the only ones.

Your state bar probably publishes a book or two with basic information on IP transfers; the ABA website should point you to a whole bunch of them.

Any good IP lawyer will have a copy of these books and you can simply ask her to copy off a few pages of forms AS IS for you! It'll take her 30 minutes to find and copy them, and another 15 minutes to write you a letter telling you that she's found and copied them...So, plan on paying for an hour of her time. :o))

Then customize them, and have a lawyer review what you've done; give her a copy of what she gave you so she'll know what you've done to mangle it. :o))

It MAY be cheaper to pay an associate to draft one from scratch! But, if you're not looking for your lawyer to negotiate the terms for you, then this is a viable option. I used to do this with my clients!

Good luck!

Re: Technology Intellectual Property/Asset

I would recommend having an attorney draft one that meets your specific needs and tell the attorney you want it drafted in such a way that you can just fill in the blanks for future use.

Re: Technology Intellectual Property/Asset transfer agreement

I will ditto what you received from attorney Graves. Unless you are experienced at this, you will not save money trying to do this yourself. Having done these types of agreements for more than 25 years, I can tell you that what is most efficient is to review your proposed sale with an attorney in a firm which is large enough to have both intellectual property attorneys (patent attorneys) and corporate transaction attorneys (and tax attorneys.) They will already have the forms and the tax angles you need to consider. If you do it yourself, even with boilerplate, your attorney, if he is good,will almost certainly just scrap your agreement and merely use it as a guide to prepare one from his or her standard forms already on his word processor. Your attorney will also be able to help you with seeing that all is in order to be transferred, such as patents, trademarks, copyrights, trade secrets, etc. and that should be done now rather than later to put you in the best negotiating position to get maximum return. Sale of assets is not one where you should make the deal and then see the attorney. Rather, it should be the other way around...see the attorney, then make the deal. That way you go into the deal in the strongest position.

The exception is where a businessman is very experienced with these types of deals (for example an experienced LES member) and has worked with an experienced firm of attorneys before and knows what is needed. There if the businessman can keep the counterparty's lawyers away from the counterparty until the deal is locked, he or she has a big advantage over a less experienced counterparty. I fear that you are being set up in that situation. If so, do not fall for it.