Should I patent this? 1

[dugbuzz]

I was recently laid-off from a company that I spent a number of years working for. During the course of my employment I developed a product which management and I were subsequently in the process of developing a patent for. I was responsible for writing up the patent description, but never got around to it. The layoff was completely unexpected, so this was in no way an intentional situation on my part.

So the question I now have is; should I hurry up and seek a patent for this product on my own? I realize that everything I developed on company time belongs to my employer - including the product that this patent is inspired by - but what about the patent itself, especially since the patent application wasn't even started on company time?

The circumstances of the layoff may be useful to this discussion, so I'll describe them here. Management insists that it wasn't personal since an Involuntary Reduction in Force was in effect. However, I believe that it was indeed personal for several reasons. The first is that I wasn't the only person eligible for the IRIF - in fact, several of the other eligible people had poorer track records than mine. The second is that I have never received a mark on my employee record despite the fact that management and I disagreed constantly on just about everything. I considered the disagreements to be professional, while I suspect that the same may not have been true from the other point-of-view. Third, I have also received news that the day after the layoff my manager was seen dismantling several systems that I worked on (which, BTW, we were never even in disagreement over as far as I know).

My interpretation of this situation is that the message I should take away from the layoff is that management no longer had any interest in continuing ANY of my work. To test this theory, I sent an e-mail to my (former boss)'s boss laying out the work that I had in progress and asking him if he had any interest in finding some alternate means to continue any of it. After three days I received no reply so I sent a follow-up e-mail to make sure he received the first one. After a week I still had no reply, so I took that to mean that he genuinely had no interest in continuing ANY of my work. Earlier today I followed up with a third e-mail that politely thanked him for his consideration and which also withdrew my offer of work continuance since I am now following up on several, more attractive leads. The reason I think that this may be important is that if I'm to interpret our parting cirsumstances as a complete lack of interest in the work I was doing, then I feel that I should be entitled to the patent.

I believe that U.S. patent law will back me up if I submit the patent before my former employer has a chance to. A few jobs back I was working on products for the patent office and this was the understanding I got from that experience. But then again, U.S. patent law is widely acknowledged to be broken, so I'd like to get some opinions on whether or not other people think I'm justified, in an ethical sense, in going this route. I am following up separately with a lawyer to find out if labor laws would back me up and also to find out if it would be considered a breach of contract.

Thanks, and I look forward to hearing the debate on this one

 

[PSE]

When you hired in did you sign any conditional papers regarding intellectual property developed during the course of employment. In my situations, companies that I have worked with owned the rights to patentable inventions/processes developed or begun during the period of employment. I would be named on the patent but the company would control the rights or even the decision to patent vs retaining a "trade secret" (in the case of process patents). Some companies even wanted to have patent rights to completely independently developed inventions as part of the acceptance of an employment offer.

If you have any copies of your employment offer(s) or other documentation. Check them carefully. You likely can go ahead and file, but your former employer may decide to excercise potential rights. Determine if you are capable of defending the patent if granted as well. You may need some deep pockets.

Regards,

 

[jmw]

I doubt the "Reader's Digest" approach of un-aknowledged emails will stand up in a court of law even if you included a bit saying "failure to respond will be interpreted as surendering any and all rights in the invention."
You could try more contacts with the company but all you will do is alert them to your intentions and the next thing you know they'll slap a restraining order on you or something.

It depends on what you expect to gain from this. Is it just to have your name on the patent as you may have every right to expect? Or did you want to develop the idea on your own?

Is it simply because you are unhappy with your treatment? If so, then I'm afraid you may have to accept it and get on with life. There is no senitment in business but lots of lawyers. In any patent situation the winner is the one with more money and more lawyers. It has nothing to do with who is right or wrong.

You can bet that if you complete and nothing comes of it, you won't hear from them but if it does make money you can reckon on some years in court with lawyers taking everything.

You might want to follow the advice from PSE and then go a step further and consult a lawyer now (better to pay a small fee now than a large one later). You will also find some help from the various Inventors web sites.

You could ask yourself if this is something the company really doesn't want to develop further and in which case you shouldn't expect that they will simply let it go, but you might be able to negotiate a deal with them that lets you make money from it, if you are prepared to recognise that they will also make them money.

In the end you might want to consider that an inventive mind will always be inventive and that while it would be nice to capitalise on the work you have done, perhaps you should be looking fo the next invention that is all your own (or take care about the terms and conditions in your next employment).


JMW

http://www.ViscoAnalyser.com

 

[Beggar]

JMW's post is well stated.

You must be listed on the patent as the inventor regardless of anything else.

The question here is, as stated above, who owns the rights to your work product. Ethically, I would say it's the people who were paying you to do the work. Certainly this is true if you signed the standard documents assigning rights to your employer. Absent such an agreement, I don't know.

All the circumstances that you described would seem to have no bearing on this case.


--------------------
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[TheTick]

You want to patent this...why?

Because you have thousands of dollars to spend for no good reason?

Because you enjoy fights you can't win?

As far as getting your name on the patent, you still should be credited as inventor, your ex-employer would only be the assignee.

 

[aardvarkdw]

I concur with everyone else. Depending on what it says in your contract, the company probably owns the rights to the product. You are entitled to have your name on it but even if you file the patent, you can't recieve any money from it if the company owns the rights. Therefore you would be spending alot of money to give your company the right to make money. I don't think I would bother except maybe to ask the company for recognition if and when THEY file for the patent.

 

[CorBlimeyLimey]

Only pursue the patent if;

1) The company signs over (in writing) all rights pertaining to the product (or at least assigns some royalties to you)

2) You intend to take the product into production yourself

3) you intend to sell (in part or in whole) all rights to the product to a 3rd party

or, foregoing 1, 2 and 3,

4) You have money and time to waste.

 

[BJC]

I think if the company has one copy of a memo instructing you to patent the ideal you would be SOl.
Remember too that the party with the $500/hr lawyer beats the the party with the $100/hr lawyer 99% of the time. If they have more than one lawyer your odds go down.

 

[dugbuzz]

OK, OK, it looks like everyone is in agreement on this one, so I get the picture. Forgive me for my ignorance in the matter since this is the first time I've directly dealt with patents before. TheTick's post is the most convincing IMO, and is probably the one I would use to explain it to someone else in the same situation. Thank you all for the feeback, though. It helped greatly!

 

[dugbuzz]

<<this is the first time I've directly dealt with patents before>>

Actually, to be more accurate, I should say that this is the first time I've directly dealt with a conflict regarding ownership of IP. Thanks again for responding, everyone.

 

[jmw]

By the way dugbuzz, welcome to Eng-Tips and thanks for yet another management euphmism for laying people off: "Involuntary Reduction in Force".


JMW

http://www.ViscoAnalyser.com

 

[IRstuff]

Actually RIFs have been around for a long time. Pretty rare to get a VOLUNTARY RIF, so it usually goes without saying that it's involuntary.

TTFN

 

[dugbuzz]

Thanks, jmw, but the letter I was forced to signed actually had IRIF in the title, so I'm afraid some other corporate wit actually deserves the credit.

 

[dik]

You might want to send them a letter to the effect that although the product was to be used in the office that it was developed on your own time at home and that you never used company material or time to develop it.

In view of their memo, you might want to enquire that since they were considering patenting it, that you would be happy to enter into an agreement with them... maybe they can front the finances.

Dik

 

[ozmosis]

You might want also to send a letter to your previous employer advising them of a ISOAPA (Involuntary Stuffing on a patent application), just to prove you're not bitter.
Seriously, as others have indicated, unless filing the patent is going to pave your streets in gold, it could end up costing you a whole lot of money to fight your corner. Here in the UK, most employment contracts have patent protection written in stone and when it is as black/white as that, it is vitually impossible to fight this in the courts if it came to that. If it is that worthwhile to you personally, I cannot see your ex-company turning a blind eye.

 

[jmw]

The 1977 patents act talks about "inalienable rights" i.e. it doesn't matter what contract you sign, your rights are protected in law and cannot be signed away.
The only problem for R&D engineers (possibly others, but I got away with it) is that the rewards they can claim are severely limited. Many others have clear title.

One company I worked for in the UK was taken over by an American Company (Schlumberger) and they quite happily sent round everyones new (proposed) contracts of employment with all the US terms and conditions. They were invalid under the act and they had to revert to the original terms where all they could do was require that you declare any inventions to them so they could at least have first refusal. That's what i got from them for a new domestic water meter design: First refusal! (I still have the design under confidentiality agreements - a damn sight cheaper than patenting and having to hand money over all the time plus avpoiding some unscrupulous company doing a patent search and deciding to rip off the design: "So sue us! Ha Ha!".

JMW

http://www.ViscoAnalyser.com

 

[IRstuff]

When did Schlumberger become American?

http://en.wikipedia.org/wiki/Schlumberger.

The founders were French and the cornerstone of the company was the development of oil field exploration instrumentation, essentially a truckload of resistance measurements of the earth.



TTFN

 

[jmw]

Good thinking IRStuff, I really should have been more clear.
Schlumberger owns a lot of companies. Our company reported back into our US parent.
This was in the Euan Baird days when they bought Thorn EMI just when every one else was getting out of tin case gas meters for solid state. Heads rolled.

Corporate structure reminds me of:
Big fleas have little fleas upon their backs to bite them, and little fleas have lesser fleas, and so ad infinitum.
(Swift)

JMW

http://www.ViscoAnalyser.com

 

[IRstuff]

s'OK.

I worked for Fairchild Semi during Schlumberger's reign. They lost about a billion a year for every year they owned us ;-)

TTFN