Disclaimer: I'm not seeking legal advice here, I will naturally seek actual legal advice before I make any decisions. I'd just like to know the lay of the land, if anyone can help.
I'm in the following position:
I'm in the UK. A year ago, I was working as a freelancer developer. I built a project for a client in NC, in the US, they paid, they mentioned wanting to give me an equity stake in 'company A' to continue updating the project in future, but nothing was formalized.
A few months later, I get a full time job at 'company B', a major software company in London. I sign a contract which has a clause stating that all inventions, intellectual property I create while in the employ of the 'company B', is owned by them. Yeah, one of those annoying clauses. It's the first full time job I've had since graduating, and honestly I didn't understand the breadth of the clause when I signed it. My own stupid fault.
Which brings us to now. My previous freelance client wants me to sign an equity agreement with 'company A', and spend time on weekends helping to grow the application as a side-project. I'm all for this: it's an interesting thing to do as a side project, I have a good relationship with the owner, and there's the potential that given a few years it could really take off.
The hitch: I'm worried about this intellectual property clause in my current employment contract. Can anybody tell me if this will bite me? (for the UK, but any anecdotes from other jurisdictions are welcome):
What if I'm a minority partner, and I sign away the intellectual property rights for all work done to 'company A'?
What if I come on board as a consultant, to begin with, with no equity stake while I'm still at 'company B', and again I sign away all intellectual property rights?
In either of these situations, can I 'sign away' whatever intellectual property rights I might have had to 'company A', in order to protect them from being claimed by 'company B'?
In my view, this surely ought to be possible, since it's not uncommon for people to do consulting work on the side of their software engineering jobs, and in such cases I've never heard of disputes over intellectual property.
Advice, guidance, anecdotes, thoughts would be appreciated!
Side note: there isn't anything in my employment contract which states that I can't do work on the side, only that I can't work for competing companies. Neither of these companies are competing, so that won't be an issue.