The Correct Answer is “Of Course We Have Agreements With Our Employees and Consultants”


Every start-up lawyer counsels his or her client to be sure that everyone working for the company signs an agreement confirming that the company owns everything that’s developed by the company. However, when it’s time to sell the company or raise a financing round and the management team is asked to produce these agreements, it’s amazing how often the response is “what agreements?” That response usually causes anxiety for the buyer/funder and its lawyers (which is never a positive development) and begins a flurry of activity to obtain signatures on the necessary agreements (which takes time and can be expensive).

Employees should sign a proprietary information and inventions agreement when their employment begins. This agreement usually ensures that the employee will keep non-public information learned in the course of his or her employment confidential, and confirms that the company owns all of the intellectual property developed by the employee. Additional provisions confirm that the employee will assist the company in protecting the intellectual property by signing patent assignments and other documents. Because some state laws require more than just continuing employment as the basis for the assignment of intellectual property, it’s important that this agreement is entered into when employment begins.

For consultants (including advisors), the consulting agreement typically includes provisions about confidentiality and the ownership of intellectual property. It is sometimes more important to obtain the appropriate agreements with consultants, because in the absence of an agreement they often will own the intellectual property they develop, and the short-term nature of their assignments can make it “challenging” to obtain the necessary agreement later.

The laws of some states, including California, restrict the permissible scope of employees’ intellectual property assignments, and require that these assignments reference these limitations so that employees are aware of them. For this reason, it’s important that a company discuss these agreements with experienced counsel before they are signed.

Entering into the agreements described above as employees and consultants come on board will allow the start-up company to truthfully say that “of course we have agreements with our employees and consultant,” and eliminate a potential roadblock to a quick and low cost financing or merger and acquisition transaction later.

Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Carr McClellan P.C. | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.