Legal Question in Business Law in California

I'm an engineer, employed by a large corporation. I've been asked to act as an advisor for a startup. Likely I would be offering guidance with respect to direction and providing techincal knowledge. The startup is not a direct competitor to my company, though my company's parent company (being a large corporation), does have subsidiaries that overlap to an extent, though they are not my employer. Still, our corporate compliance is making sure it all looks good before I proceed.

I have 3 questions related to this:

1. How should I set up the terms? The startup doesn't have money to pay me (and they only expect an hour of two a week of my time), so I expect to get equity in return. I'm curious about a reasonable amount (1 or 2%?), also, how do you structure the terms such that the equity vests eventually? For example, I shouldn't be on the hook for the rest of my life, however, I do appreciate that this is something I should be willing to put a serious commitment in. I'm thinking like 3-5 year investment of my time.

2. In terms of technical advice, what is the best level of involvement? Am I inventing solutions with them, or offering (hopefully enlightening guidance) that points them in the right direction to discover answers for themselves? This ties into my next question related to intellectual property.

3. If I am inventing with them, what is the best way to handle intellectual property? Do large corporations generally frown on patents filed by employees with their moonlighting gigs? On the other hand, if I am deeply involved in an invention and do not get named as an inventor there is the risk that, through litigation, the patent is invalidated. I appreciate that I probably need to have a conversation with my current employer about this, however if I just ask straight out I'm sure the legal team will do what they do best -- just say "no". It's always the safest answer for them. If, on the other hand, I come to them with an informed opinion I am in a better place to negotiate.

Thanks much in advance! I'm sorry for the long, multipart question.


Asked on 7/15/15, 11:46 am

1 Answer from Attorneys

Nicholas Spirtos Law Offices of Nicholas B. Spirtos

This question is far too complex and involved for any attorney on this forum to answer. You need to meet with a business attorney who can help you set up your new venture.

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Answered on 7/16/15, 8:10 am


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