Legal Question in Intellectual Property in California

Re: My ex-employer would like me to assign all rights for my co-authored patent

If it were me I would not sign anything without having an attorney review it and knowing what rights I would be giving up. With respect to the value of the patent, if it has value tell me again why you would want to give up the value without compensation? I would definitely want reasonable compensation for giving up significant rights.

Now, as a co-author (is it a product? software? what has been patented?) you may have concurrent rights to those of your former employer, i.e., you may be able to use the product and/or exploit it. However, you will need to review any and all employment agreements that you DID sign.

I would be happy to discuss this matter with you.

J. Caleb Donner

805-494-6557

Re: My ex-employer would like me to assign all rights for my co-authored patent

If your employment agreement said that anything you developed while working for them belongs to the company (as most do), your rights to any patent is doubtful.

However, the fact that the company feels it necessary to get an assignment of rights from you should indicate that your signature is worth something to them, possibly a fee plus royalties.

You should not sign or agree to anything until after you have consulted a competent attorney who is skillful at negotiating such agreements. Even though this will cost you something, it will be well worth the money in what you gain.