Avoiding Technology and IP Clause Lawsuits with Mark Tyson

Harris and Shawn welcome back legal expert and attorney, Mark Tyson. Mark shares some legal advice in negotiating contracts and how to handle particular pitfalls with your employer or contractor.
We want to thank Cyber City Circuits for sponsoring this episode! Cyber City Circuits is an electronics shop and contract manufacturer based in Augusta, GA. Use the coupon code HELLOBLINKSHOW to receive 10% off your order of electronics or mention that you heard about them on the Hello Blink Show for a 25% discount on the assembly costs of manufacturing.

In this episode of the Hello Blink Show, Harris and Shawn welcome back legal expert and attorney, Mark Tyson. Mark shares some legal advice in negotiating contracts and how to handle particular pitfalls with your employer or contractor. 

One Powerful Quotation
  • 43:47: Shawn: “Read your damn contract.”
Key Topics
  • 3:17: Shawn opens the show by asking Mark about the invention of assignment clause in contracts as a conflict of interest for ownership. 
  • 7:18: Shawn discusses with Mark about forgoing statutes as an employee. Mark recommends negotiating your contract and understanding all of the terms/conditions. 
  • 10:20: Harris asks Mark about defining formal employment agreements as an employee with a small company or startup. Mark encourages listeners to be upfront with the employer and the reality behind trying to copyright ownership.
  • 12:49: Shawn inquires with Mark about red flags in contracts and when to seek legal advice. Mark highlights what to be look out for in the contract language.
  • 15:31: Shawn and Mark agree that everything is negotiable; Mark adds this can leverage your value including compensation, benefits, stock options, etc. 
  • 18:25: Mark explains his definition of inventions and how they are defined in contracts. He delves into the prior ownership clause and the importance of due diligence. 
  • 27:32: Mark responds to Harris’ comments on future success and how contract negotiation are formulated.
  • 31:14: Mark explains the difference between prior ownership and background technology clauses and their implications. 
  • 33:37: Shawn asks Mark about disclosing prior inventions or body of works on contracts. 
  • 37:02: Harris asks Mark how people should approach seeking legal advice. 
  • 40:45: Mark discusses contract negotiation and reasons you need to ask good questions. He suggests sample agreements and why pricing isn’t always the benefit of the bargain. 
  • 44:34: Mark talks about the risk-analysis in the value of contracts for ownership. 
  • 46:48: Harris shares his final thoughts for the episode, and Mark adds that enforcing new contracts is contingent on additional independent consideration and covenants such as noncompetes or non-solicitations. 
List of Resources
Example of Invention Assignment Clause
Assignment of Inventions - Research or any other work performed while working on the behalf of CLIENT to CLIENT. You agree that all Inventions, research or any other work performed while working on the behalf of CLIENT that are developed using the equipment, supplies, facilities, or Proprietary Information of CLIENT or
 result from or are suggested by work performed by you for CLIENT or are conceived or reduced to practice during your contract term with CLIENT and relate to the business and products, or to the actual or demonstrably anticipated research or development of CLIENT.

Example of Prior Inventions Clause
Prior Inventions - It is understood that all Personal Inventions, if any, whether patented or unpatented, which I made prior to my employment by the Company, are excluded from this Agreement. To preclude any possible uncertainty, I have set forth on Schedule A attached hereto a complete list of all of my prior Personal Inventions, including numbers of all patents and patent applications and a brief description of all unpatented Personal Inventions which are not the property of a previous employer. I represent and covenant that the list is complete and that, if no items are on the list, I have no such prior Personal Inventions. I agree to notify the Company in writing before I make any disclosure or perform any work on behalf of the Company which appears to threaten or conflict with proprietary rights I claim in any Personal Invention. In the event of my failure to give such notice, I agree that I will make no claim against the Company with respect to any such Personal Invention.

Example of Background Technology Clause
The parties acknowledge that certain intellectual property developed, acquired, or otherwise obtained by Contractor prior to, or independently of, this Agreement (collectively, “Background Technology”) may be used by Contractor in the performance of Services. Contractor shall not include Background Technology in any deliverable or Work Product without Company’s prior written consent. Contractor unconditionally grants to Company a non-exclusive, perpetual, irrevocable, worldwide, fully-paid right and license, with the right to sublicense through multiple levels of sublicensees, under all of Contractor’s intellectual property rights in any Background Technology incorporated into or necessary for Company to fully utilize and capitalize the Work Product, (a) to reproduce, create derivative works of, distribute, publicly perform, publicly display, digitally transmit, and otherwise use the Work Product in any medium or format, whether now known or hereafter discovered, (b) to use, make, have made, sell, offer to sell, import, and otherwise exploit any product or service based on, embodying, incorporating, or derived from the Work Product, and (c) to exercise any and all other present or future rights in the Work Product.

Guest Information
Mark started his own law firm, Tyson Law PLLC, to help entrepreneurs and small businesses with their legal issues.


License Information
“Hello Blink Show” by Kenny Consulting Group, LLC and Skal Risa, LLC is licensed under CC BY 4.0
Intro and outro song is “Routine” by Amine Maxwell is licensed under CC BY 3.0
Special Guest: Mark Tyson.

Email Newsletter

Get new episodes sent to your inbox.

checkmark Got it. You're on the list!
© Skal Risa, LLC and Kenny Consulting Group, LLC | Creative Commons Attribution (CC-BY)