US-Licensed Tech Trans Attorney: IP Assignment & Royalty Agreem (Hardware, Trade Secret, US-Canada)

Posted last week

Worldwide

Summary

I'm the founder of a Texas LLC developing a novel hardware product in the consumer lighting space. The technology itself is confidential and will not be shared for this engagement; you'll work from deal structure only. I'm bringing on a technical collaborator based in Canada or potentially USA or Europe (NDA already signed) and need a thorough agreement in place before development starts. Working title: Technology Development, IP Assignment & Royalty Agreement. What the agreement must handle: Full IP assignment to the company, covering two scenarios: the collaborator implements my existing design, or he invents on top of it to reach the goal. Everything he creates belongs to the company either way. Royalty-based compensation (no upfront pay). I need help structuring the royalty: base, tiers tied to results, duration, audit rights, and what happens if he stops contributing. Strong confidentiality, non-use, and non-circumvention. We are deliberately not patenting; this contract plus trade secret law is the entire protection, so it has to hold weight. Enforceability against an individual in Canada from a Texas LLC. I expect you to have a view on arbitration vs. courts and on what Canadian law requires for the assignment to hold up. Scope: drafting, up to two revision rounds, and support while I negotiate terms with the collaborator. Likely follow-on work: advisor NDAs and, later, development and manufacturing agreements with multiple factories. Hard requirements (please don't apply if these don't describe you): Licensed attorney in a US state, active and in good standing. Name your state bar in your proposal; I will verify it in the bar directory before responding. Technology transactions / IP contract drafting is your core practice. You have drafted royalty or licensing compensation structures before. You have real trade secret drafting experience (not just trademark/copyright work). Preferred, not required: US-Canada cross-border deal experience; hardware, consumer product, or contract manufacturing background; Texas bar; comfort with regulated consumer products. Not a fit: general practitioners, paralegals, non-US-licensed contract drafters, patent prosecution specialists without transactional drafting practice, and agencies. Individual attorneys only. To apply, answer these four questions in your proposal (proposals that skip them will be declined without review): Which US state bar(s) are you admitted to, and what year? In 3 or 4 sentences: my collaborator breaches from Canada. Walk me through how I actually stop him and enforce this agreement. Does it matter which Canadian province he lives in? Why or why not? What does Canadian law require for an IP assignment from him to fully hold up? Start your proposal with the phrase "moral rights" so I know you read this far. Budget: propose a flat fee for the drafting scope above, and note your rate for follow-on work.

  • Less than 30 hrs/week
    Hourly
  • 1-3 months
    Duration
  • Expert
    Experience Level
  • $20.00

    -

    $200.00

    Hourly
  • Remote Job
  • Complex project
    Project Type
Skills and Expertise
Mandatory skills
Intellectual Property Law
Activity on this job
  • Proposals:10 to 15
  • Last viewed by client:last week
  • Hires:
    1
  • Interviewing:
    8
  • Invites sent:
    21
  • Unanswered invites:
    6
About the client
Member since Apr 24, 2020
  • Canada
    Nelson8:23 AM
  • $25K total spent
    76 hires, 24 active
  • 578 hours
  • Health & Fitness
    Small company (2-9 people)

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