Legal Question in Intellectual Property in California

I am an engineer and signed an agreement with a company to develop a widget. The written deal was that I would get $0 for the development and only royalty after the product started to sell. The IP would belong to the company.

The product prototype is working, however the company wants all the documentation and designs. I refused to give it to them, as they will never pay me if they don't need me.

I am an individual in CA, the company is an LLC in Idaho.

Their lawyer sent me a letter stating that all designs need to be submitted to them or else they will take the next step.

Questions:

1. If I don't send them the designs, can they go after me, even though I did not take any money from them for the development.

2. If I give them the designs, can they come after me for any damages.

3. If I give them the designs, can I go after them for royalty when the product is sold.

4. I am fully aware, that once they get the designs, I will never see them or any money after that. What is the best way to proceed.

Thanks.


Asked on 8/29/11, 4:13 pm

1 Answer from Attorneys
Daniel Bakondi The Law Office of Daniel Bakondi

1. theoretically breach of contract, but I dont know if their case would be good

2. less of a chance - I do not see what their damages would be if you meet your obligations

3. yes, but you should have an attorney review your agreements to make sure they are solid

4. why do you say this? is it a reputable company? have you already executed an agreement? maybe you need to revise your agreement to give yourself some security. I cannot tell whether you signed an agreement that relates to patents, or a licensing agreement for technology the contract stipulates is yours, whether your technology is a trade secret, or copyrightable, whether your agreement constitute a partnership agreement, who owns the technology and rights under your agreement, etc. Also, you would want choice of law and jurisdiction in case of disputes to of course be california. You came to a lawyer a little late if you dont have one already, but better late than never. Send me an email if you want help.

Best,

Daniel Bakondi, Esq.

[email protected]

415-450-0424

The Law Office of Daniel Bakondi, APLC

870 Market Street, Suite 1161

San Francisco CA 94102

http://www.danielbakondi.com

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Answered on 8/29/11, 4:47 pm


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