Definitely an important question to ask. It’s key for your company to have some sort of agreement that covers this potential problem beforehand. Your best bet is to draft up some form of an Intellectual Property (IP) / Invention Assignment agreement. This contract would assign all materials and IP created by the specialist / adviser to the company. Most agreements will include all IP that was created or acquired prior to the company’s incorporation is the company’s as well. Without such an agreement, the specialist / adviser will likely own the IP that s/he creates. It becomes problematic without such an agreement during an angel/VC round, when the investors are unable to establish a chain of title for the startup’s IP as part of their legal due diligence investigation. I unfortunately see this problem often in the startup world.
You should also include a non-disclosure agreement within such agreement. This protects the company from the specialist /adviser sharing confidential information (trade secrets) to outside forces. Thus, the IP agreement covers who owns the new property created, and the NDA provision covers all the other valuable stuff that the specialist / adviser could have learned while working for you.
You should check outto have a skilled startup attorney draft an agreement for your startup. Failure to have these types of agreements in place before approaching outsiders could have disastrous effects. Our legal platform is super easy and convenient to use so it’s worth checking us out.