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What's A Reluctant Inventor To Do?
downOnPatents asks: "A company I used to work for has written up a patent application, with me as one of the inventors, and has asked me to review it and sign the necessary legal docs. I haven't seen the application yet, but the idea is broad, and would make many /.'ers cringe. It's not worthwhile trying to get them to change the application or their point of view --- they want as broad a patent as possible to make themselves more desirable to investors and stop competitors. My IP agreement with the company forces me to sign over any inventions, but I'm worried that if I just sign the docs, I'll somehow be endorsing the idea that this is a unique invention and that the company owns all the rights described in the application. What would other folks do if faced with this situation?"
...then you are stuck and you'll have to sign - perhaps you should talk to a lawyer.
If you are really opposed to this happening - consider it for the future, and look for work elsewhere. It's not the best solution, but no one is forcing you to work for that company.
BlackNova Traders
Either sign it and be happy about it or else quit your job and forget all about it. There really aren't any other things you can do. Or you could just sign your name and underneath it write "under duress" just so you know that's the case, even though it's not...
I'd probably just send in an "Ask Slashdot" question to find out. :o)
Mas vale cholo, que mal acompañado.
Seriously. If you care, get a lawyer.
And then, get a good headhunter.
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-*- Any technology indistinguishable from magic is insufficiently advanced -*-
"My IP agreement with the company forces me to sign over any inventions"
Its not the people applying for the patents that is the problem, its the Patent office. Besides, you are legally obligated to anyways... unless it is so broad that you believe it not to be you "invention".
You _used_ to work for them, right? They can't force you to claim an "invention" you don't recognize as one. If you know of prior art or can clearly express the excessive breadth of their intended claims, you can tell them so.
but merely acknowledge that you had a hand in the invention and do not object to the filing by you employer.
If you relly want to make a difference: next time you invent something, get in on the patent application process to make it fair.
Pay no attention to the man behind the curtain with all your metadata.
Remember, IANAL means I Am NOT A Lawyer. No matter what anyone says, you need to talk to a real lawyer if you want to be the least bit sure what you are legally allowed to do.
Alternately, sign it, then file a comment/complaint/whatever with the USPTO. :) Play both ends....
"You can never have too many elephants on your team."
if you think it's broad and that they won't change their minds and reword the document, that's not your fault. sign the document and let them pay the lawyers to try to uphold something that will probably be refuted.
sign it and don't think twice about it.
just because they put in a patent application and it gets granted doesn't mean that it won't get refuted by competitors and that there won't be a big legal battle. that's the price that companies that are engaging in these battles have to pay.
sign it (and maybe start looking for smarter companies)
While this obviously isn't an easy solution, well, if there were an easy solution to the problem...
It's like when people want everything to go their way but don't want to have to do any hard work to get it. "Eternal vigilance is the price of freedom." THAT'S the motto that should be on U.S. coins.
"Destroy science and religion. Science would re-emerge exactly the same; but not religion." - Penn Jillette, paraphrased
On how much you like your job, but if you feel strongly about it tell them you won't sign such a broad patent application because you designed a much more specific product. They can fire you but I don't think they can make you sign it.
This is a bowel disruptor, and you are just full of shit. - Spider Jerusalem
If this idea/process is very broad, just find some prior work from some other source and show it to your company that demonstrates that this is not a new idea.
If they go ahead with the patent, hopefully you can tell 'others' about the prior work.
Don't sign anything without consulting your own lawyer first...
... do stuff you're ethically against. For example, if you're a pacifist, I don't believe you could be forced to work on an arms project, for example.
Check your contract and local statutory law about ethical issues.
Certainly in the UK (EU?) you can't be forced to do this sort of thing.
What would other folks do if faced with this situation?
Get a lawyer. Not to attack them, just to insure you (and they) are acting prudently. Lawyers are only a "Bad Thing"(tm)(c), when they aren't yours. I read every day in the WSJ, Forbes, etc. about crap some fools fell for because they believed the marketing/sales hype or whatever instead of getting solid legal counsel.
1Alpha7
Live to be Moderated
It is really hard to get companies to not file broad patents (I know, the Biotech company I used to work for was always trying to get out broad genetics patents), but maybe the best thing you can do is lobby for an open licensing of the product (which can mean a million things)..
Maybe a good example is how developers at Sun (like Patrick Naughton) lobbied Sun to distribute Java fairly openly... It might be the best thing you can do for the time being, until the EFF gets legislative bodies to pass relevant and fair laws!!! (we hope!)
What the heck?.....BIOTECH!
I'd like to say that I'd run from the company if it came to that. I don't know that I would. Legally, I'd say you have to either sign it, or accept the consequences of not signing it. Seems like it may be time to look at your company and make a decision. Either way, I'd speak with an attorney and see what the Law has to say about it. Maybe there is another option.
--
-- SIGFPE
What part of 'used to work for' did you have problems understanding?
If you disagree then it must be overrated, redundant or trolling.
If you believe that your credibility is priceless, then you have a simple solution: don't sign it. If you don't sign it, you may risk being unemployed, but if your credibility is priceless then it's a pretty black and white issue.
If it is more of a grey area (and I would assume it is considering that you posted this), then think about what it is really worth to you. Would you be willing to sacrifice some pay or some options to defend your credibility? How much? If your skills are in demand, then making a stand is easier if you know you've got other options. Furthermore, if your skills are in high enough demand, refusing to sign the patent may not get you fired (although it may make you future in that company much more unpleasant).
Before you decide whether to make a stand you might want to talk to a head hunter or see what's out there on dice or monster board. If you can quickly move to another job with little damage to salary then it might not be worth fretting over.
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This sig has been temporarily disconnected or is no longer in service
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/bin/fortune | slashdotsig.sh
First, you're asking the slashdot community as a start. After you read through the various replies and sift out the useful ones, I would find an attorney conversant in IP and pay for some of his or her time to figure what you want versus what is likely to be doable. Good luck, it's a difficult situation.
Do what your heart tells you.
------ Curiosity killed the cat. {satisfaction brought it back | it didn't die ignorant | lack of it is killing mankind
If you don't work for them any longer then you don't have to sign anything period. You signed a contract at the start of your tenure with them and that covers this, you are under no obligation to continue to sign agreements. Either your initial agreement covers it or it doesn't. They need your signature to add validity to their patent application and you don't have to give it to them.
I asked if you know any lawyers because they will confirm what I have just said. Call your cousin, ex-roommate's brother, whomever. This is basic contract stuff.
If your conscience cannot take it, leave and work elsewhere.
If you cannot afford to leave, then sign it. They after all pay your bills.
Mode (3) smart-aleck mode. Press * to return to main menu.
I am in a similar situation. My advice is get over it. Negotiate yourself a nice piece of the pie, in case they are able to generate any revenue as a result and don't worry about it.
Despite the socialist tendencies of the vast majority of the readers on this site, in America and the majority of the rest of the world, intellectual property is something to be guarded and profited from. If you're smart or lucky enough to have gotten there first, and documented that fact in a patent, you deserve to reap the rewards.
Frank W. Miller
IANAL, so I won't bother to try to tell you the legal quirks. What I CAN say is, read the application, and ask yourself whether you believe you had a noticable hand in inventing whatever it is that the patent application is for. If so, you will probably be forced to sign over on it. My advice in that case is to grunt, bear it, and follow through with the contract you signed, and sign off on the patent. Say a couple thousand Hail Mary's to attone for your sins or something. :)
/.
IF, however, you feel there is any doubt whether you had a direct hand in the invention, or if you doubt that it constitutes a real innovation, get yourself a lawyer. Slashdot is chock full of very very bright people, but only a real live lawyer can tell you how much at stake you put your own ass if you refuse to sign. The other advantage of a lawyer is confidentiality. Someone please correct me if I am wrong, but I believe that to share information about the nature of the patent with a lawyer would not be a violation of any NDA's. In other words, you can actually tell them what the full situation is, rather than a sketchy, vague description such as your NDA's have surely forced you to post here on
My advice is to do as your company says, and sign the relevant documents. Put your faith in the patent office - if there is anything dubious in your application, the patent office will soon tell you. The patents office are used to analysing the originality of patent applications, you are not (and neither are the majority of Slashdot readers!). If they see nothing wrong with your patent application, then your idea is original.
Did you forget by the time you reached the end of the comment that said comment began with "A company I used to work for"?
If you disagree then it must be overrated, redundant or trolling.
If you're obligated, you're obligated; not much you can do except learn from the experience.
There was probably a point in time during the execution of this project in which this outcome became the probable outcome. That would have been the time to remove yourself from the project, and not put yourself in this spot. Choosing to remain a part of the team and complete the project, this is the logical outcome.
This really isn't meant as a flame, but in just about every project I've been involved with at work, there has been a point at which I have to evaulate "Do I want my name on this?". I can't believe things are terribly different elsewhere.
Anyways, my $.02. Learn from the experience, and move on.
-- if(game-theory) moderate++;
You no longer are employed by them. They can not force you to sign anything. My advice is to tell them to take a long stroll off of a short pier and then if they try to start anything with you just claim you didn't invent what their patent application is describing.
Kintanon
Check out JoshJitsu.info for Brazilian Ji
You really need to talk to a lawyer first. This will make sure your best interest is being looked out for too, not just the company's. Talk to a lawyer soon and don't let them try to talk you into anything without it first being reviewed by a lawyer. Hiring an attorney is the only way to legally protect your rights and to make sure that you aren't being screwed over in the process. Good-luck.
I think the important part here is that you dont work for this company anymore. Alright, so your contract with them says that you have to turn over any inventions you created while employed by them. This does not mean that you have to sign off on their patent. Noone can make you put your signature on something you dont want to, that's called duress. Now, you could refuse to endorse this patent but as you said this could be another stupid patent that the PTO grants. If you really feel that strongly that this idea/invention does not warrant a patent then the best thing you can do is make that opinion known to the PTO. I'm sure hearing that from one of the people involved in creating what's now up for a patent would carry alot of weight with the PTO. Just make sure that your argument against it is well thought out otherwise your previous employer could spin it as sour grapes.
IANL - consult one on this if you care at all about keeping your job, sanity and/or health.
If you can present the lawers with examples of prior art that forces them to limit or rework their claims, they I don't believe they will have a choice in the matter... they will have to do so, or (eventually) face problems defending their patent in court. Doubly damning, I would think, would be that you, the supposed inventor, were the one who informed them of the areas in which their patent was overly broad. If you do this, though, I'd really make sure you had a new job lined up already.
"Great men are not always wise: neither do the aged understand judgement." Job 32:9
First, make sure that you read the Oath or Declaration that accompanies the application. You are going to be asked to sign something under oath, so if you aren't satisfied that it is true -- don't do it. The better you can articulate your reasons, the better you can deal with charges that you are not living up to your end of the patent assignment agreement. The attorney that is sending you the application should want to spend time with you explaining all the duties you have, and all the legal requirements of the application you are reviewing.
Second, remember to send the attorneys all of the prior art you are aware of. You are required to do that, so doing it can't be against your agreement. More prior art can result in narrower claims, but a stronger patent.
Third, if this is a former employer, make sure that you find out how you will be paid for your time. One reasonable approach is to try to get them agree to pay your normal consulting rate for the time you spend on this matter.
Good Luck!
As any noble slashdotter, you should be highly worried about protecting our image and yours. Although there may be some legal mumbo-jumbo involved in all of this...do not worry my friend for I have 3 easy steps to relieve you of your woes.
The first step is to get a good trench coat. One which fully covers your body and can protect you from being recognized. This will be useful before and after the exercise (later to avoid the photographs from the reporters).
The second step is to approach your place of business with several containers of some type of combustible fuel. Gasoline will work, but we here loyal slashdotters who feel all patents should be destroyed would recommend something with a little more umph. You should take this fuel source and very carefully douse the walls of your office building with this Cure-All Agent(tm) [patent pending].
Now you have come to the final step. This is where you show your love for the free world. This is the point of no return. A little spark, a little flame, and walla... in just 3 steps you have single handedly saved the world from yet another Fork-&-Spoon Patent(tm).
Honestly, if you sign the papers, or if you burn the place down. No one will blame you for the events that transpired. We know how corporate america works and we have seen this before. Show your disastisfaction if you must, but I don't recommend losing any sleep over this one.
"You should always go to other people's funerals; otherwise, they won't come to yours." -- Yogi Berra
The lawyer on the other hand will be trying to push the envelope as much as possible (and pull the wool over the patent office's eyes by citing as little as possible).
Make sure that as many existing patents as possible and previously published articles are cited in the application - well chosen these I bet that you are far more capable at researching your patent than the patent attorney is - if you are especially carefull you can find existing patents that have expired as prior art :-)
On your own, send a parallel letter to the USPTO. Be sure to cite the patent application number, and declare yourself as one of the named inventors. Explain your situation, and explain why the USPTO should not grant the patent.
However, I echo the sentiments expressed above: Cough up the $500 or so and talk to an intellectual property and/or contract lawyer before you do anything, including what I outlined above.
And, speaking as one tech to another, thank you for having a conscience about this stuff.
Schwab
Editor, A1-AAA AmeriCaptions
The hardest thing to do in life, it seems, is to stick to your beliefs and not ever go back on them. If you quit now, before they make you sign the paperwork then you're free of this delima.
This, of course, would not be an easy thing to do and I can't even say I'd quit, but it is something you should consider if you feel as strongly as it seems you might.
Also, I would certainly bring up the discussion of the sillyness of the patent if its truly that bad. Even if they won't change their mind, its important that they at least heard your opinion even if it won't be followed.
The next site to slashdot will be ready soon, but subscribers can beat the rush and start slashdotting it early!
I'm in much the same straits at my current gig.
Consulted my lawyer, and he basically told me that if I felt that strongly about it, I shouldn't have signed the employment agreement in the first place. YMMV, but assuming the boilerplate you signed is equivalent to the boilerplate I signed (sounds like it), you're pretty much SOL -- even assuming you're willing to throw money and lawyer-hours at invalidating the employment agreement, odds are the judge is going to rule against you prima facie (presuming you entered into the employment agreement willingly).
Or so I'm told, anyway; IANAL.
Good luck should you decide to fight it...
If you sign those papers, then you are signing a oath that you believe yourself to be the inventor of the patented invention. If you don't believe that the invention is new, and don't want to participate in the theft of an idea from the public domain -- which is patent fraud -- then I would either tell the company lawyers, or have an attorney send a letter to the company lawyers, stating that you believe that you are not the original inventor of the idea, and that you believe that you would be committing purjury by signing the patent application.
If they try and fire you for refusing to participate in patent fraud, you'll have a strong case to sue for wrongful termination.
If this patent app is as broad and unbelievable as you imply, it will probably be rejected anyway. Of course if it isn't rejected you'll look like a fool for a few days, but so what?. Either way, just signing your name and letting it go it much easier than going to court over breaking your contract. Oh yeah, and next time, RTFC.
"These are the days that must happen to you." -Walt Whitman
"I can only show you Linux... you're the one who has to read the man pages."
Watergate Switch:
"Uh...I don't recall any inventions of the sort. Sorry."
       OR
Smoke Screen:
"I smoked it and inhaled; thus I don't recall"
Sig it.
Or even preview your posts and fix the spelling in the header. Maybe I should practice what I preach.
"These are the days that must happen to you." -Walt Whitman
If I were to create a new sneaker tread design that would be patentable, this would not allow my employer to patent the entire sneaker and say that I invented it.
I'm not a lawyer, but I think you need one.
Uncle Sam sent me to the Persian Gulf, and all I got was this lousy Syndrome!
- A company I used to work for has written up a patent application, with me as one of the inventors, and has asked me to review it and sign the necessary legal docs.
Umm... a lot of people seem to say "Quit your job" or "don't sign if you don't mind being fired" or such remarks. This guy evidently NO LONGER works for the company, but he signed a contract requiring him to do this while he worked there.I personally have no advice, as IANAL. I'd personally call my lawyer if I was facing a situation like this.
"Evil beware: I'm armed to the teeth and packing a hampster!"
Lex orandi, lex credendi.
Since you no longer work for this company, I don't see any obligation to sign any paperwork (unless your IP agreement explicitly states such). You want to make sure you get copies of any and everything that shows you as an inventor. This will make it harder for your former company to rewriting the application without your name.
You can negotiate with them. Offer to sign the application, but only after they assign your rights back to you. Then you have equal rights to the patent.
Finally, keep in mind that filing an application doesn't guarantee a patent (although it seems like it these days), which won't happen for over a year. Someone could find some prior art.
Come on folks! I come from an American public education background too and even I can tell that "A company I used to work for" is past tense. i.e. he no longer works for said company.
If it's just vocabulary that's the problem then please bookmark this, fellows.
If you disagree then it must be overrated, redundant or trolling.
A contract that forces you to sign other legal documents regardless of if you support those other documents. Interesting.
Some of the people here may not understand how patents are rewarded in todays companies. I work for a software company myself, and if you do something that gets the company a patent, you are rewarded significantly. At my company, it's to the tune of thousands of dollars in realized profit.
The person who wrote this question should consider taking the following stance:
1. Allow the company get the patent so he/she can reap the profits of being paid immediately by his/her company.
2. Let the company fight it out in court and with the public over the validity of the patent.
This can be summed up as 'It's no my problem'. It sounds like apathy, but in this day and age, we need more data points in the patent-wars to bring about change. If his patent is indeed ridiculous, it'll help our movement of changing how patents are awarded. If his patent isn't ridiculous, his company can gain whatever success is inherent in the field they compete in.
Either way, the programmer/patent author will end up realizing actual cash profit from his work. Anyone who advises him to fight this to the death is basically saying 'You shouldn't make money'.
Again, if the patent is ridiculous, the people who have to pay for the legal fees and patent costs are the people who made the boneheaded decision in the first place, not the author.
What about looking for, and finding, prior art?
By law, you are required to reveal all known prior art. You can sign the application with as long as it lists prior art.
By doing so, you will have reduced the chances of the patent being approved while at the same time fulfilling your legal obligation to the company. Not the best solution, but you're in a difficult spot.
First, even though you had to sign over the rights to the invention I do not believe this obligates you to sign a patent.
Second, I would point out to the company that I can only sign for things I have invented and no more. If necessary, even use words like "I do not wish to commit fraud by saying I invented air."
You, as an employee, have an obligation to the people you hired to assist in any way to maintain the strength of their patents. If you waver in this in any way, they should fire you on the spot, because you're interests are not those of your employer's.
/any/ information which you have which may undermine the claim of 'uniqueness' - which from your statement, looks like is in question.
That being said, however, you also have an obligation to disclose to the patent office
If it is in fact not unique, compile a list of published prior art, and give it to the patent attorney. If you don't, and instead suppress it, not only do you waste the company's money (the patent will be thrown out), but you also perjure yourself when you sign the disclosure document.
If the company ignores the prior art you cite, and proceeds to file a patent anyway, you should quit, as the hucksters would be misleading their investors (and customers), and don't deserve your services anyway.
[IANAL, standard disclaimers apply..]
If you can prove it is too broad, and could invalidate the patent claim with prior art, refuse to sign, and show them the evidence why.
If they go ahead anyway, you can always send in the contravening evidence to the Patent office.
If it IS a real patent, but is too broad, you are forced to sign, but, you can send into the patent office contravening evidence, and get the patent claim invalidated (given you no longer work for them, seems fair). A patent that is too broad is an issue only the patent office can deal with (usually poorly ).
BTW, IANAL....
Shannon Mann.
A comment overheard in a corn field `If you have better ideas, lets hear them. I am all ears.'
Very interesting that you no longer work for the company. The question then becomes why you allow them to occupy any of your attention. Why do anything for them? What are they going to give you?
Are they going to reimburse your legal fees to investigate this? There may be a conflict with your current empolyment contract!
You might well be obligated to sign, but no-one can pressure you to do so without adequate legal advice. It might take you a long time in the library to read up on all this stuff.
The IP agreements allow the company to patent whatever they wish of what you produce (at most). Most of them are written with a clause that says they can go ahead anyway if they cannot obtain your signature.
At the least I would state my objections. Most likely I would not sign. They would still go ahead and might or might not consider it a mark against me. But perhaps not. After all, if they are turning off the people that produce the goodies with their policies and they know it, which they can only do if people like you speak out, then they just might reconsider or modify their plans.
If I didn't feel that I could at least say my piece and not sign if I thought it was wrong then I would get my resume in shape. A 9-5 just isn't worth it. And there are too many interesting places looking for a few good nerds to sweat it overly much.
"A company I used to work for..."
Tell them that the patent is overly broad, extends beyond the borders of your specific ideas, and refuse to sign it (At least if that is the case.). It's not like you still work for them, and chances are that they won't bother to sue you if you explain to them that this extends beyond your original idea. But consult a lawyer first, and make sure to give him ALL of the details.
And if you really did give them that idea when you worked for them, in all of its greadt bredth, well, tough. Looks like greed got the best of you, and you gave over an idea under the terms of your contract as you agreed to do to earn you wages. You made this bed, hop on in.
I would carefully read through your IP agreement. Being required to sign an invention over to the company is completely different from being compelled to sign a patent application. You can sign over your rights to the company (as the IP probably did) without having to sign the application. There is no way the company can force you to sign any FEDERAL applications or paperwork, especially when you do not consider it valid. If you are still nervous about it demand a copy of the IP (within your rights) and pay an attorney an hour's consult fee to double check.
As a holder of several patents, it's quite easy:
if you worked for them and accepted a salary while the idea was developed, and you did that under an agreement (pre-employment as I do), then you are obligated to sign it. If the patent is written as to be too broad, then it can be challenged in court at a later date.(if say you have an idea that extends this particular work into another area). Things that invalidate a patent include: adding someone to a patent that did not participate (or excluding them),claiming more than the documentary evidence shows was done(ie your engineering notes, or lab notebook should back up the claim). You can write anything into a patent(at filing), but after 1 year you (or in ths case the company) must have the body of work to show when the examiner starts to validate the patent.
BTW, you should also be eligible for some sort of compensation for your signature (in my case 100.00 per patent..oh boy).
If I were you I would tell them that you can't sign the patent application because you don't think that the idea is patentable, and make it clear that if they give you a hard time you will send them a detailed letter stating why it is not patentable. Their lawyers would absolutely hate to have such a letter on record and will probably do a great deal to avoid this. If the need arises, send them a letter stating all the reasons why you don't think the system is patentable. Look for prior art and list all the examples you can find. Also outline why you as a professional in your field feel that the idea is obvious. (Both prior-art and obviousness can be used to invalidate patents.)
I am not a lawyer and I don't even play one on TV, so you should consult a lawyer for some real advice (and don't base your decision on what I say). I've used the people at kcslegal before with great results, and I'm happy to recommend them.
-----
Free P2P Backup, Windows & Linux
I think you should detail as much about this "invention" as is possible and release it into the public domain. If you're courageous, do this under your real name. If you're fearful of litigation, most likely the case considering the asshole'esque nature of American firms, do it under some alias and make the invention description vague enough as to not tip off this firm that you are the author. In no lawyer, but if the stuff is released into public domain and has a similar concept/structure as the patent application to be filed, it may create a situation where it can be shown they were not some epic innovators and perhaps work towards making the patent application not approved.
(If my logic and/or grammar is weak, I've been up for 2 days now and so fuck you.)
Here is a quick legal analysis from a law student (incapable of giving real legal advice):
As the question implies, an application for a patent requires the inventor to sign an oath that "he believes himself to be the original and first inventor of the [invention]." See 35 U.S.C. 115. You appear to believe that the patent covers more than original ground.
Now, if you don't believe that the oath is true, but you sign it, you may open up the patent to be completely unenforceable due to "inequitable conduct." While I'm not sure that this idea has been used in precisely your case, it still seems to apply. The trick is, someone that your company is enforcing the patent against has to know that you signed the false oath; how would you answer the question if asked by a lawyer? You may want to point this out to your employer.
Your contract to sign over all IP may or may not require you to sign the oath. Look at it more closely. Of course, unless you want to cause trouble, you may just want to sign the thing...
The patent office gets rewarded for issuing patents, so they aren't inclined to help, *but* you might be able to satisfy your personal moral dilemma by anonymously telling them that you've seen the application, and that they should deny the patent because it is too broad to merit a patent, and (if applicable) that the idea is already in the open public and/or that the basis can be attributed to past work.
"The girl makes Godot look punctual." -- Buffy
Okay, you _used_ to work for this company. You also have an agreement to sign over all IP to them under certain circumstances.
So what's the company's problem? If they have a contract from you, why the heck do they need another signature? It sounds more like they want your name on the application. I would just refuse to sign, letting them know that they already own your work in this regard, and that they need nothing more from you.
One proactive thing you could do is urge them to use a free patent. Write up a license that allows everyone to use the patent, void only if the patent holder is does not have equal access to a user's patent. In the latter case simply go through normal channels and sell or swap the rights.
A Government Is a Body of People, Usually Notably Ungoverned
As an inventor, you are responsible before the patent office for truthfully representing that the patent you are filing is worthy of patent protection. It is your professional responsability to reveal all known prior art and to not seek a patent unless you believe your invention is novel, useful, etc. Don't think you can shift this burden onto your employer, and don't think you have to do what they say beyond simply signing over your property rights. Given that they can't fire you, I think you are pretty safe in this. To keep your ass out of trouble, make sure you don't reveal the invention to anybody (i.e. don't violate your confidentiality agreement), and make sure you explicitly sign over any IP rights to the company as you promised to do in your agreement with them. However, I don't believe they will be able to file that patent application without involving you in the patent prosecution process. Finally, make sure to forward any known prior art to your former employer and their patent consel. Make sure they read it. They can ignore it at their peril. This is not legal advice. Get a lawyer. --- gmp
It's not uncommon for claims in an application to be written broadly to try to get as much as possible out. Many of the overly broad claims will get thrown out and that is expected.
Unfortunately, that is not always the case, especially with some of the newer software and internet related patents. If you are legally obligated, you have to sign, but there is a possible way to hinder the patent.
An Information Disclosure statement will be submitted, giving relevant information, articles and literature to help the examiner judge the novelty and obviousness of the patent. The duty is to submit ALL KNOWN relevant information.
All you have to do is make sure you can find information which will demonstrate that it is not new or that it is obvious or both. If you submit enough, it should scuttle the patent assuming the examiner isn't a total moron.
"...heroic hearts, made weak by time and fate, but strong in will, to strive, to seek, to find, and not to yield."
You might also consider telling your nearest corporate officer of your non-novelty concern. By law (I think -- IANAL) they would then HAVE to investigate the prior art, and that could slow down or kill the patent. This may not be the desired outcome for the corporate officer. (I was at a company where the CEO deliberately kept himself in the dark on prior art precisely to avoid IP quagmires of this sort.)
It is all based on wording. If you agree with some of it, and not with others, cross it out, initial, and then sign the modified document. Or, add stuff in, initial, and sign.
-- Erich
Slashdot reader since 1997
I don't think you can be made to sign any specific legal brief. Get a lawyer to wirte up something simple that signs over your rights to that idea/patent, but refuse to sign the patent application, for reasons of professional integrity or whatever. You don't attach you name to the application, but they own the idea whereever it goes.
"Sometimes it's hard to tell the dancer from the dance." --Corwin Of Amber in CoC
get a lawyer, have him send a letter to them saying that all further communications should go to her.
ok then your [sic] infringing on my copyright! Could you as [sic] me next time before STEALING my comments for your own?
Maybe even write up a more specific, more accurate description of your invention, and sign that and give it to them.
- "History shows again and again how nature points out the folly of men" -- Blue Oyster Cult, 'Godzilla'
Your contract requires you to sign over your inventions, but if you think that the application is too broad then what they are applying for is not your invention. Simple. Just read and and send them a note saying "sorry, this is not what I invented, so I can't sign it."
Check your contract carefully. You probably signed something that obliged you to hand over ownership of the IP to your employer, but that might NOT be the same as an obligation on you to help them apply for a patent.
Where is the clause that says you must go this extra step?
Just try refusing, stating politely that you have a principle on this. Your employer or ex-employer will go probably go ahead anyway but won't hold this against you. What's it worth to them to take you to court on this? Do they think that with your signature on the form they have more chance of getting the patent?
If they really think this, its probably because
they're worried you are going to try to fight them for the property later. If so, offer to sign a letter disclaiming any ownership for yourself. (Make sure this contains your true (principled) reasons for not signing the application.) That should protect them legally from you coming after them for the IP in future.
Before you make any decisions you might want to talk to an attorney to see what risks you face. It will depend a lot on what agreements you commited to while you worked there, and what you might have signed when leaving.
---
This sig has been temporarily disconnected or is no longer in service
It states you must take an oath that you believe to be the first inventor of the subject matter.
I don't think quitting would get you out of trouble, most IP contracts I've seen have a "as long as you live" type of deal when it comes to trying to obtain/defend patents etc... However, I also think the contract would become void or there is usually some clause in the contract saying that they can't force you to do something illegal. (which IMO this is).
Even more troubling, would be for you to sign the document and have the USPTO come after you with your Ask Slashdot post in hand to take you to jail or something.
Of course, IANAL and so and and so forth...
If you are thinking of not signing the necessary patent documents, please, please see an attorney first. See an attorney even if you are thinking of signing the documents, if you feel you are doing so under pressure.
Also please consider the possibility that you will not have to resign, be fired, or otherwise face major negative employment consequences if, after receiving advice of counsel, you deline to sign. This is because your statement: is actually quite vague. You may believe your employment agreement requires you to sign patent applications. Your employer may tell you that it does. Hell, your employer may honestly believe that it does. None of these things mean that your employment agreement legally does require you to sign the pertinent documents. It may, or it may not. See an attorney.
Finally, you might also want to consider a possibility that will be unpopular on Slashdot -- i.e., that in seeking the broadest possible patent protection your employer does not have any sort of evil, nefarious, or predatory purpose. Your employer's purpose may be entirely defensive. Unfortunately, given the rules of the game right now, many companies believe that they are *forced* to be in a patent arms race in order to protect themselves, even if they don't have any "offensive" intention themselves. In game theory terms, it is a classical Prisoner's Dilemma. Sadly, the best way to ensure that others don't get a particular patent is to get it yourself. Perhaps more importantly, one way to prevent an competitor from getting a related patent is to establish the prior art by getting one yourself. Finally, sometimes the best way to deter a claim for patent infringement is to have ammuntion -- i.e., patents -- with which you can counter-claim.
Only Women Bleed (Sex, Sharia remix)
On the other hand, if you feel that it is not a unique new patentable invention and that there is prior art, you may wish to refuse to sign on the grounds that by signing the patent application you would be knowingly making a false declaration (that you believe it is a unique new patentable invention) to a federal government office (the patent office) and could consequently be jailed for perjury. The company might fire you, but you might be able to sue them over it. They would argue that you refused to give them rights to your invention per your contract, you would argue that there was no invention.
Bluntly, you got yourself into this situation when you signed the patent agreement. Having been through itellectual property disputes with past employers (one of them took some software I had developed at home with my personal computer and demanded I give them the source code so they could sell it after they found me using the binary on my machine in the office - I had wanted to release it under GPL but now nobody has it) I advise that in the future, if you don't want to get stuck in this sort of situation, don't sign those agreements.
I have not signed any intellectual property or nondisclosure agreements with my present employer, and I did tell my manager I did not want to sign an NDA provided by a client. (They produced a less restrictive NDA and I signed it.)
Never having been involved in such a thing I have to ask if the two items are tied. If they aren't then I'd sign away on the work and refuse to sign the patent application. You fulfill your legal obligation but keep your conscious clear.
If the two are tied together I wonder if it would be possible to sign off but claim you don't consider the patent unique.
Either way, it would be best to contact a lawyer.
I don't want knowledge. I want certainty. - Law, David Bowie
I seem to remember a ethics standard that was mentioned in the ethics class that I was required to tack from my colletge. You could try looking credibility/ethics up with the IEEE or contacting them. I think that they have a clause in the agreement that most employers agree with that the employer will not require an employe to do something that is moraly wrong and or illegal. So you might be able to find a way out that way.
JOIN !LINK CLUB!
1) If your current employer will not let you do work for anyone else (check your contract) simply refuse to sign. Why? You must review the materials before signing and that would constitute labor. Since you can't work for anyone else, you can't sign.
2) Tell them you need to review the documents, and you will charge them some exorbitant fee to do so, say $5,000,000. You were willing on doing it, but they were not willing on compensating you.
(BTW I am not a lawyer, get a real opion elsewhere)
or, what would Edison do?
/broaden/ your thinking", meaning an invention realized in silicon can still be rejected if you can find prior art of the same invention realized in wood or something. The fact that the PTO is unable to keep up with the rapid pace of technological development, letting stuff thru that's 'obvious' (to techno-literate folks) or otherwise flawed shouldn't effect your decision. I'd sign it - it could still be shot down by the examiner or later a judge.
Patent applicants can do prior art research to get an idea of how likely their invention is going to get rejected, but unless the evidence is very clear most people just send in the application - esp. if the former employeer is footing the legal bills to get your name on a patent (a nice addition to any resume). That is to say, most applications are worded very broadly in the first draft anyway, get rejected, then resubmitted with narrower claims, etc. This from a former PTO employee who remembers the instructions, "you have to
try { do() || do_not(); } catch (JediException err) { yoda(err); }
Legally, it is probably best that you do not play politics with your employer. Sign the documentation and frame it if the group you're affiliated with is awarded the patent (hell, I would, at least), if anything, for humor value.
:-)
It is probably best to look for employment elsewhere if this is an aggravating IP case that will upset a lot of people.
Consider this: Negatively Slashdotting a company does damage that goes beyond Joe Six-Pack Consumer, right into the core of IT and computing. Companies like nVidia have been permanently bruised after carelessness with IP caused them to be negatively Slashdotted.
If this is coupled by other news organizations, such as ZDNet, your company is going to face some seriously BAD times.
A little startup company with only "investment protential" is going to be squashed; if not by lawsuits, by its own implosion as no VC wants to touch it and management checks out.
...just let me know when the company appears in FuckedCompany.com
--
Spindletop Blackbird, the GNU/Linux Cube.
to have this problem. You don't want to be in these places though.
A former employer of mine applied for a patent for one of my inventions, a month after I left them. I was never contacted about this, and am not mentioned anywhere on the patent, even though I did all of the work. I really don't care either way because I feel that they wasted more resources on the patent than it will ever return in income.
This is besides the point though because in this shop, raises, promotions, and general status were determined by how many patents you had compared to the person in the next cubicle. This quota system created a horrible back-stabbing environment to work in, where a co-worker would rip apart your projects to any non-technical manager, using silly and unfounded arguments, and then claim your work as their own superior idea. This is not the type of environment that fosters innovation.
Since I left this company, their R&D department was toppled and spread to the wind like the tower of babel. Someone within the management structure had determined that their obsession with numerous useless patents did not make good business sense.
-- Len
You may have signed over your rights to the patent, but you have every right to participate in the patent issuing process.
If you send a letter to the patent examiner (or better, request an oral hearing - $130) there is a good chance that he will take it into consideration, especially if it's clear that you are not trying to cause harm to your ex-employer and that you are doing this from your conscience and understanding of the underlying art.
----
Stop worrying about the risks of nuclear power and start worrying about the risks of not using nuclear power.
A. If they didn't need you for the patent, they wouldn't be asking you... therefore they probably _need_ your signature.
B. There's a legal case to be made here. "We have the right to patent any invention you create while under our employ" is legal, assuming they tell you to sign the patent stuff while you still work there. The counter argument would be that if they didn't see your invention as useful enough to patent back when you invented it, that they can't go back and invoke this long after you're gone. Did the contract you signed during employement have any wording along the lines of: "You are required to assist us in obtaining patents on your inventions invented under our employ for X years after termination of employement?"
You can fight this.
11*43+456^2
it is only necessary that you have contributed to the conception of at least one claim in the patent application. It is NOT necessary that you have contributed to conception of every claim in the patent application. Typically these things are drafted with claims ranging from broad to narrow. If the application contains a narrow claim and you have contributed to the conception of the invention defined by THAT claim, then there is essentially no problem with your being named as an inventor.
If there are statements in the specification that you believe to be untrue, or the application contains claims that you believe to be unpatentable, bring this to the attention of the patent attorneys. Their incentives should be to submit a document that is factually correct. If you are aware of prior art that potentially invalidates one or more claims, bring that to the attention of the patent attorneys as well (doing so satisfies your duty of disclosure to the PTO -- see 37 C.F.R. 1.56).
If you can't arrive at a document that you believe to be factually correct, and the patent attorneys can't persuade you that there is at least a good faith argument that the full scope of the claims is patentable, then you're on the horns of a dilemma. In effect, you're caught between your obligations under your employment agreement (which frequently contain provisions requiring you to assign any inventions made during employment, and execute any necessary paperwork, even after your employment has ended) and the obligations placed on you by the "jail paragraph" in the oath/declaration accompanying the patent application. Personally, I'd rather face a company trying to get an injunction forcing me to execute a declaration when I think the document is counterfactual than take a chance with the federal criminal statute. But either way, if you can't convince the patent attorneys and they can't convince you, you're going to need legal counsel.
I don't think I know enough to give a complete answer. When you say your IP agreement says you have to sign over any inventions, does that mean that the company has any rights to any inventions you make while working for them? If so, it's not clear to me that they'd need your signature on anything that agrees that their patent application is valid. (They might not feel this way, of course.)
If your IP agreement says that you have to sign whatever document they hand to you regarding patents, etc., then you're pretty much stuck, although I wouldn't feel too bad claiming that at least one of my signatures can't really be legally binding in that case.
It seems to me that you could sign a document that says, essentially, "I contributed in the invention of X, and did so while under IP agreement with the company." I don't know about the intricacies of the law and patent applications, but in the abstract, your question implies that it seems to you that they're claiming more rights than they deserve, from an invention you contributed to.
You shouldn't (I use shouldn't in the "my sense of morals and logic" sense, since I don't know if the law agrees with me here) have to assert that the rights the company is claiming are appropriate; you probably do have to indicate that whatever rights they claim, they are claiming because you (and your coworkers) invented the thing while working at the company, so the company is justified in applying for a patent at all.
If, as your post indicates, you're not working for them any more, you might be able to talk to them and work something out: that is, you might be able to agree to something you're comfortable with, such as, "the actual device (or whatever) in this patent application (or a particular example of such a thing) is in fact the one designed in part by me while working at the company, and therefore is the company's to patent. I do not necessarily subscribe to any claims as to the breadth of application or scope of this device (or whatever) in the patent application."
The company may be troublesome, but if your IP agreement was like the few I've seen, it doesn't seem to me like you're claiming rights to IP that you ceded in your agreement, so I don't think they should be able to successfully sue you for breach of contract. All you're doing is saying that the patent application was written up by patent lawyers, not you, and that they are willing to claim more than you would if it was your patent to apply for, which it isn't.
This seems to me to satisfy everybody; your conscience is clear, because you haven't legally claimed something you don't believe. The patent office, probably, won't care what you think and will approve the patent anyway, and so the company will get what they want too.
Of course, this won't change anything as far as IP being abused by big companies to beat up on little guys, but the question wasn't "What can I do to fight the IP Man?", the answer to which is probably buried in every Patent article on Slashdot.
Barney
I used to do a lot of work with the intellectual property office of a Large Company known for its abundance of patents, and that was one of the things they always told me. I mean, they didn't twist anybody's arm to get information about prior art, but they were forced to consider it if it was volunteered. (At this place they would generally just not bother to file.)
IAAL, and if you signed a contract to hand over any patent, then you had damn well better "hand it over" just exactly on the terms they want. Otherwise, **you** are personally liable to them for the worth of the patent, and they will ..., and this letter will be one of the first things found by anybody opposing the patent in court.
1. Sue your ass for all you are worth.
2. Give you shitty employment references which say you refused to hand over a patent, and you will never, ever work in that field again. Not ever, not for anybody who checks employment references.
The saving grace in all this for you is that if there is ever any patent litigation over this, the first thing that will happen is that some lawyer will take your deposition (sworn testimony, so they can anticipate what you would say at trial), and then you can simply declare you thought this was all a bunch of overbroad explicative deleted stuff, way too broad, etc. You might write a letter to your former employer saying you think the patent is probably too broad
In other words, meet your obligations to your former employer, but make it clear for anybody who objects to the patent that one of the inventors thinks it is overreaching.
This helps you only if you believe that the patent application does not fulfill the relevant legal requirements. Unfortunately, it does not help you if you just feel that the legal requirements are wrong. In that case, the patent application is technically truthful, and it is probably your obligation to sign your name to this.
However, you do have some opportunities to find holes in the application. If you find any of the claims obvious or non-original, write up a short case and require that it be addressed before you will sign. If you can find prior art related to the patent claims, demand that it be included in the application. Patent applications may not knowingly omit prior art, and applicants are required to search for prior art, so this behavior is entirely legitimate.
IANAL
The evaluation of an action as 'practical' . . . depends on what it is that one wishes to practice.
This _exact_ situation happened to me. I informed my former employer that I did not support their patent applications. I agreed to do the minimum which I was legally obligated to do, but refused to give them any assistance in drafting the patent or explaining anything to the patent agent. They were not happy, but they lived with it.
Not listing an inventor on a patent is grounds for invalidating a patent. It could very well be the case that they legally have to have you sign the patent. In one sense, you have them over a barrel.
OTOH, getting a patent is usually a good thing - it boosts the resume, and can lead to royalties.
Since this is a former employer, you might point out that you need to give the patent office all known prior art, and that reviewing the patent and collecting the art would be things you would be PAID to do if you still worked there. Basically, you need to establish a contract you find acceptable to you in order for you to do your job as an inventor, This may be a royalty based contract, or a per time consulting contract, or you could just work for free - depending on how you feel about your time and this idea.
I wouldn't worry about the breadth of the patent - I guarantee there are scores of succcessful patents broader. It is quite common for the patent to be initially refused and then redrafted to be more focussed. In fact, if I were looking over the patent, I would look at ways it could be even broader. A classic example
The Cohen Boyer patent established the ability to inject a gene vector into a cell and induce that cell to make a protein. Initially it was written for prokaryotes only. A one sentence add-on made it valuable for eukaryotes as well - and that dramatically increased the patent value.
you are stuck and you'll have to sign
I doubt very much that he is legally obligated to sign a patent claim to something he doesn't think he invented.
All he has to do is tell his employer, "Sorry, this patent isn't what we invented, it is too broad and I won't sign it unless it is narrowed down to what we actually did do."
(IANAL)
--------
The IP agreement you signed may or may not obligate you to sign the patent app. Furthermore, company policies that you were aware of but did not explicitly sign off on may obligate you to sign it. Don't listen to not-a-lawyers who tell you what your rights are. The law was not written by /.-ers, it was written by lawyers, and you'll need one to get a clue about this.
The truth: anyone can be sued in the good-ole US of A, for any thing. What matters is the way some dried-up old judge interprets the law. Any given case can go either way. A lawyer might give you odds on how the case will go, but if they tell you that you'll DEFINITELY win, you should find another lawyer. So, regardless of your "rights", you face a liability: they might be motivated to sue you. Even if you win, it will cost you money and stress.
Another thing: as the inventor of the patent, who is now working elsewhere, YOU are the person most likely to infringe the patent. What would be more natural than for you to use the technology? Therefore, this company might come after you or your new employer for patent infringement.
Sorry, but this is going to cost you a lot of time and stress. I know...
Do NOT sign the patent. Get prior art together. Tell your ex-employer he either must narrow the patent, or you will not sign it, and file a letter of protest with the patent office.
/ 24/PizzoFiles2.html
Here is an excerpt from an interview that Tim O'Reilly did with the director of the Patent Office earlier this year:
Tim: I talked to one developer who said, "I have my name on nine patents, and I think they're all a joke."
Patent Office Director Dickinson: Well, then, he's committed a federal crime, because you have to execute a declaration that says you believe in the patentable invention. If he doesn't, then I urge him to commit them to the public domain and --
Tim: Effectively, you know, you've got people who are being compelled by their companies
to have their name on patents and, you know --
Dickinson: They're not compelled to work for anybody, are they? It's a free country.
(This Dickinson guy is a asshole, BTW)
http://www.oreillynet.com/pub/a/patents/2000/05
-Braddock
The USPTO obligates you, as an inventor seeking a patent grant, to provide ALL the information you can provide about possible prior arts to your invention. However, they can't require you to dilvulge a misgiving unless you file for a patent in the first place! Therefore, it is important that you sign the papers to get the process started.
Once the preliminary patent process has begun, you can then submit your side of the argument that the patent is to broad. Moreover, provide specific examples of inventions or practices that are similar to yours, thus proving why it is too broad.
By taking this road you both
1) satisfy your contractual obligation to your old
employer.
2) satisfy your contractual obligation to the USPTO as an inventor
3) satisfy your moral obligation to see the patent ruled as too broad.
I mean you have to sign the form, or you are screwed... well dont sign it and make a movie!!
Non-Deterministic Finite Automata
Even if you are contracted to sign IP over, in no way can they compel you to commit a faudulent act.
If the patent is overly more broad, or in dispute with with the work you have done, refuse to endorce it on that basis.
Do it. Sometimes the best way to get rid of a bad law is to abuse it and then draw attention to the abuse.
Never take moderation advice from sigs, including this one.
I know this sounds rather flip. But what do they have on you? I would certainly try this route before I spent a bunch of money consulting a lawyer. If you avoid them enough, it might just go away. I've used this method before to great effect to make some problems go away. (Note this is a bad idea when dealing with financial obligation and tickets. Can you say Bench Warrant? I thought you could.)
My Weblog
geez, did only two people notice it's a company he used to work for?
Silly slashdot, sigs are for kids!
but what did Anonymous Emily Dickinson say? (sorry - couldn't resist)
Yes, as he was compensated by the company at the time he invented whatever, and the terms of the compensation included the requirement that all IP he invents be signed over. This is merely fulfilling the contractual obligations of his former employment. Just because he isn't getting paid for new work doesn't mean he isn't still obligated to complete the work he was already paid for.
Essentially, the employer could sue him to pay back part of his wages, or surrender any stock options, etc. that he may still hold. (Depends on his termination agreement as to whether he gets to keep his options, etc.)
Typically, patent lawyers are careful to listen to the inventors, since if any of the inventors doesn't agree with the invention, they can derail the patent process at the USPTO itself. (At least, that's what they seem to be worried about.) Patent lawyers want their patents to be airtight, so if they ever have to defend them in court, the other side can't easily poke holes in them.
--Joe--
Program Intellivision!
First of all, meet you legal obligations fully.
If that means signing invention forms for the filing, and an assignment document, then do so.
Second, the USPTO requires that parties filing for patent protect fully disclose all prior art known to the filer. You MUST, as part of this, list all relevant prior art known to you, and in turn your former employer MUST disclose this to the USPTO.
DON'T asume the USPTO will look for prior art: they rely primarily on existing patents, not on open publications, and so there isn't much prior art from the PTO's point of view.
So if you happen to have knowlege of some prior art then disclose it. Failing to do so can lead to the invalidation of the patent.
I don't know if the USPTO has an AC form for posting prior art, but perhaps they should.
IANAL, but I do have a (non-software) patent due to issue RSN. So I've been through the process.
-seeker
fox one fox one
I work for the USPS and am listed on several patents (though strangely I was never asked to sign anything). When the patent lawyers ask you for descriptions of the application (or whatever) that they're trying to help you patent, they give you the following advice:
"Make it sound specific enough to be considered unique, but otherwise as broad and vague as possible."
Though I guess I always really knew that, it was strange to see it so openely expressed.
The really funny thing is, *very* little of what we're doing is unique, yet they are trying to patent the entire application. Half the time you listen to these lawyers, you'll find yourself wondering what the hell it is you're trying to patent.
Source code is a lot like a parachute; it needs to be open in order to function properly.
That said, patent applicants (that means YOU) have an affirmative duty to disclose prior art known to them, and this duty continues beyond the time of initial application. In other words, if you find out two days before the patent issues that the exact same invention was described in some journal the year you were born, you still must disclose this to the USPTO.
Now with that in mind, if you have have or come by any knowledge that the claimed invention is not both novel and useful, you personally have a duty to disclose that fact. Your patent agent (one hopes obviously) has more interest in a career than this one application, so you can probably count on her to Do the Right Thing.
Lacking <sarcasm> tags,
So, if your desire is to see this overly-broad invention not become patentable, not signing probably won't help. In contrast, pointing out relevant prior art and obviousness arguments, as other posts have suggested, probably would be effective. Also, as other posts have suggested, if you seriously are considering not signing, you should probably talk to a lawyer to see what your potential liability exposure is.
I politely discussed my reservations with the company's patent attorneys and with my CEO. They ended up agreeing with my position and we didn't file the patent application.
It's easy to assume that patent lawyers are ravening inhuman beasts, I guess, but it turns out that they really are human and often quite reasonable. I wouldn't take a hyperlegalistic or adversrial tack with your old company until I'd actually had a few polite conversations with the relevant people to explain your views.
Get a lawyer FIRST...
I think I would make sure the lawyer knows your concerns. Myself, I would like to know if I could, regardless of whether I have to sign or not, submit an opposition document to the Patent Office, or if you are limited due to a Nondisclosure, etc. I suspect that if you do this, you might be sued, but I also expect that you would come out on top. See if you are able to recover court and attourney costs if they sue you for this.
Good luck!
Here are a couple sections, so you have some sense of the type of agreement which might cause someone to be obligated to help with a patent, even after they stop working for a company.
2. (f) Patent and Copyright Registrations.
Employee shall assist the Company, or its designee, at the Company's expense, in every proper way to secure the Company's rights in the Inventions and any copyrights, patents, mask work rights or other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments and all other instruments which the Company shall deem necessary in order to apply for and obtain such rights and in order to assign and convey to the Company, its successors, assigns, and nominees the sole and exclusive rights, title and interest in and to such Inventions, and any copyrights, patents, mask work rights or other intellectual property rights relating thereto. Employee agrees that it is Employee's obligation to execute or cause to be executed, when it is in Employee's power to do so, any such instrument or papers after the termination of this Agreement. If the Company is unable because of the Employee's mental or physical incapacity or for any other reason to secure Employee's signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Inventions or original works of authorship assigned to the Company as above, then Employee hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Employee's agent and attorney in fact, to act for and in Employee's behalf and stead to execute and file any such applications and to do all other lawfully permitted acts to further the prosecution and issuance of letters patent or copyright registrations thereon with the same legal force and effect as if executed by Employee.
12. Successors, Assigns and Survival.
This Agreement shall be binding on Employee's heirs, executors, administrators and other legal representatives and will be for the benefit of the Company, its successors and assigns. The terms of this Agreement shall survive the termination of Employee's employment and the assignment of this Agreement by the Company to any successor in interest or other assignee.
One startling approach might be to make out a declaration in standard USPTO form that you aren't the original and first inventor, specifying why and listing prior art. This, submitted to the company, is sure to cause concern that it will be submitted to the USPTO. If it was, it could raise a question in the patent examiner's mind as to whether the company was being entirely honest with him...
Other, less contentious, approaches follow directly from each requirement of the patent office: the algorithm is basically
for clause in `lawyers interpretation`; do
assert the contrary to the clause
done
I once worked for a company who would need just such an approach: needless to say I haven't since!
davecb@spamcop.net
When working for a large corporation a couple months ago, I had the opportunity to meet with the IP lawyers to discuss a couple patent applications I was considering submitting. One of the ideas, though, was originally created by one of my partners who had already left the company. Though he had the idea, I made it happen.
However, the IP lawyers informed me that if my name appears as one of the inventors on the patent application and I didn't invent it, then the patent can and will get nullified in court. Additionally, this could be considered fraud in some countries, causing more problems.
So, if you sign the patent application for something you did not invent, it doesn't matter whether you endorse it or not... the application is not valid.
> I'm worried that if I just sign the docs, I'll
> somehow be endorsing the idea that this is a
> unique invention
So in your professional opinion, this is NOT a unique invention? How can they force you to sign? You have a legal obligation NOT TO LIE about it.
-- "At Microsoft, quality is job 1.1" -- PC Magazine, Nov. 1994
I think he would drive the moneychangers from the temple, if you know what I mean (wink, wink).
--------
Although you may be forced to get involved in a patent that you are not at all behind, you may be able to take some comfort in the general protocol of patent ownership. The fact of the matter is, most company-owned patents of a software or hardware nature are generally not aggresively defended. On the contrary, most of the time, companies seek software and hardware patents as a defensive measure. There are some companies out there that have truly original patents on inventions that are widely used, and they aggresively pursue these patents. However, the most common use of software and hardware patents is to defend against aggressive patent holders. When a company contacts your company's legal department in an attempt to enforce a patent, your company would reference it's own collection of patents to see if there is something that they can counter-enforce. In the realm of overly general patents such as the one you are concerned about, your company may find something that it can use to counter-enforce. They then approach the aggressor with this counter-patent, and generally the other company either backs off, or is willing to find a compromise that is attractive to both parties. So if you are concerned about immoral enforcement of a patent that you are party to, you must first ask yourself if the patent is so broad as to actually include technology that is either A) damn similar to technology another company is using, or B) a technology that will foreseeably be widely implemented in various ways by other companies in your field. If so, then there is a good chance that this is a defensive patent, and you have little to worry about. If, on the other hand, your invention could possibly be a trade secret (it is totally revolutionary, and noone else is likely to come up with a similar technology without examining yours), then there is a strong possibility that this patent could be used aggressively. However, these sort of revolutionary patents are not common, and generally not seen as "a patent", so much as "the patent that is going to kick our competitors' asses and place us years ahead of the field". It's never fun to sign a patent that you think is sketchy, but if you are forced to, I hope these ideas will help set you on the path to enlightenment about what happens with that patent after you sign it. If you decide to try to fight the patent from within the company, I agree with several other posts here - it's wise to get a lawyer. And yes, a headhunter might be a good idea as well.
Paper Pusher
Here it is, hope it helps clarify what might be going on.
I'm not involved, I just have some insight to offer, and it's was to long for a post.
That said, I'd recommend you read your contract very carefully. Maybe all your obligations would be satisified with a letter stating that as by your contract you will assign any rights to this "invention" to the company, but as you find it distasteful to apply for a patent on it, you do not see yourslelf as being obliged to assist them anyt further in the process. Further waste of your time will have to be compensated at $1000.000 an hour. But *do* check with your lawyer, and let him write this letter for you.
In Murphy We Turst
Unless it is part of your job function you are probably under no obligation to do the prior art searchers for your employer. And you should realize that any prior art you cite in the patent strengthens the patent (since a court will assume that the patent examiner took the prior art you cited into account).
Heheheh... Ok, you get points for being hardcore. Problem here is, this company probably has some pretty significant evidence that they have original authorship (or at least one of their employees was the original author). It would be a hard and probably fruitless battle for the EFF (something they are used to). However, Anonymous Cowardly Guerrilla Commenter, if it makes you feel any better, this is my favorite slashdot reply to date. Just printed it and put it on my wall. Heheh... Guerrilla Software Freedom Fighters... heheh...
Paper Pusher
Basically he doesn't think the patent is an honest one. So where it comes to the point where he has to sign "I do verily believe this document is true and accurate.", he CANNOT sign!
And if his company sues him for not signing, his lawyer in court will say "Your honor, the defendant is willing to sign any document that he believes to be true."
The judge will laugh, and award all court costs to the company.
The end.
If, on the other hand, it is unique, but you believe it unpatentable because it is "obvious" then you are in a very nasty can of worms that has been opened up by the US Patent Office recently. It used to be that "obvious" meant "obvious to those skilled in the art", which was the same audience to whom you address your patent disclosure such that they can reproduce the value of your invention based solely on that disclosure. However, nowadays, "obvious" seems to be "obvious to your manager, judges, lawyers and/or juries".
This is exceedingly pathological, I agree, but it does seem to be the standard for patentability that was set by the Amazon "single click" patent's enforcability. If it is the standard for patentability, then you may be obligated to proceed with the patent due to the fiduciary responsibility of the company and its employees to its stockholders.
Seastead this.
Here art the issues:
1) If you know of prior art, you have the responsibility to tell the patent attorney of
it.
2) If the lawyers refuse to incorporate the prior
art into the patent, refuse to sign.
If they do, then you should sign.
Remember 2 things:
1) Every company wants to file as broad a patent as possible. They are simply worth more.
2) If prior art exists it is the responsibility of the inventors to disclose what they know and also the patent office to discover it based on previous filings. The first Office Action will no doubt bring these issues to light for the inventors to defend.
3) You are not a judge and jury. If this patent actually gets defended in court (and few ever do)
then the search for truth begins.As an inventor, your responsibility is simply to be honest and forthright about whether you believe your invention to be "new and useful" as is stated on the papers you're asked to sign.
Surrender to the void.
If your employer gets overzealous in the claims, as the inventor it's your job to point out that what you know of related prior art and see that it's properly cited in the application. Like wise, you must also be careful not to take credit for any part of an invention that you yourself did not invent. Keep sending back the application until you believe it to accurately reflect your contribution (and that of coinventors) along with the current state of the prior art. Don't jump to conclusion about what might be "obvious" to one that's skilled in the art -- the patent office just means that nobody has done it before.
That said... You'd be surprised what's patentable. Just because it seems stupid or overbroad you should not dismiss the patentability of something on those grounds. If it's truly silly, the patent will be turned down or ultimately be overruled (and if the company's willing to pay for that, let them). Also, patents, even stupid ones, look pretty good on the resume (if nothing else, because it shows you're familiar with IP considerations and because you're a "team player" and, presumably, technically savvy).
Many companies build up a mass of patents so they have some sort of patent "throw weight". An example:
Of course, if a company with a big patent library goes up against one without its own stash, the result is much more one-sided. Hence the motivation for corporate lawyers to build up their client's breadth of patent coverage.
Also, keep in mind that the agreement he has with
his former company is that he must sign over the
rights to the patent to his former employer.
nothing in his agreement forces him to patent
anything!
Therefore, he'll be asked to sign 2 things:
1) The patent app itself. This is where he should talk to his former company's patent attorney and work to get the patent disclosure itself correct.
2) The rights to the actual patent, assuming it is eventually awarded. This must be notarized. This one he absolutely must sign to honor the agreement with his former company.
Surrender to the void.
Step 1: get a lawyer.
Step 2: ask him what it means when you sign a document with the endorsement "without recourse".
If you read the document they're asking you to sign it will say something to the effect of:
"I have reviewed and understood the contents of this patent application, including the claim(s). I do not know and do not believe that the claimed invention was ever known or used in the United States of America before my invention thereof, or patented or described in any printed publication in any country before my invention thereof or more than one year prior to this application."
You are signing this under Section 1001 of Title 18 of the United States Code, which can punish false statements by fines/imprisonment. So, if you truly do not believe that it's an invention, then you should *not* sign. In fact, you must refuse to sign. However, you should have a good reason. Otherwise, your employer can take you to court to force you to comply with your employment agreement.
Also note that you have an obligation to disclose all references (articles, other patents, products, etc.) that you believe are relevant prior art to your invention. So, if you have a reason why you think the patent is too broad, and you know of prior inventions, then you should disclose that as well.
If you're only hesitating because you don't like patents, then you should sign... and if you really hate it, find a job that doesn't involve invention, or in which your employers agree with you about patents.
Thalia
P.S. The preceding is not legal advice. Follow at your own risk.
I used to think that common sense prevailed in most of the world, but that's not truly the case in dealing with Corporations. I echo the advice to see a lawyer. You can always take a long, hot, soaking shower afterwards to get back to feeling clean. But it seems to me... You're a FORMER employee. They no longer have a hold on you other than perhaps a non-compete agreement. If there IS some language that compels you to sign off on a patent application that was in progress when you quit, then make it as painful as you can for the former employer. One idea that springs immediately to mind is to charge 'em thousands of dollars in "consulting fees" to come back to sign it. They typically don't like that. Another is to present them with a letter (phrased with lawyer backup) saying that you feel the patent application is overly broad, you believe there is prior art, and if you are compelled to sign, you'll be providing the PTO with the information that leads you to believe that it's overly broad. But mostly... it seems to me that as soon as you walked, they couldn't make you do anything to further the aims of the company you walked from. Then again... there's the sad case of Evan Brown - www.unixguru.com. Lastly, I have no idea where this "2x4 between the eyes" perspective was imparted to me, but FWIW: "They PAY you because money motivates you to do something that you wouldn't otherwise do". The counterbalance to that is that you're a functiontional human being, with a brain and a conscience - the responsibility for your actions is, ultimately, solely yours.
In my research during chemical engineering, this situation is not only common, it's generally the way to approach chemical patents. In otherwords, say you develop Chemical Y. Chemical Y has a certain compositional makeup that might involve a metal and lots of other bits. You run and find chemical Y is good for a certain process, thus naturally you want to patent Y. Most patent lawyers and experts suggest that you want to patent as many chemicals that are close in composition to Y as you can (for example, if the metal you had was platinum, they'd insist you also claim the similar chemical based on palladium, ruthenium, rhodium, etc. because these all have similar chemical properties), even though you never actually made those materials or tested them.
What will then happen is that unless there's a major conflict with prior patents, you'll get all those derivatives of Y, including Y, patented. Later, someone may come down the road and ask to invalid your claim to a derivative of Y because you never made it, and you'd probably lose that claim in the patent, which is no big loss, because your Chemical Y is still bringing in the licensing bucks. Individual claims of a patent can be invalided, but not necessarily the whole patent itself.
On the other hand, if you only patented Y, and then find down the road that a derivative of Y is much better and would lead you more profit margins, you would have to reapply for that patent. And between the time that the Y patent comes out and you start the derivative of Y patent, someone may have beat you to the punch and gotten the patent on the derivative of Y already, especially if the change between Y and it's derivative is 'intuitively obvious', (eg, someone used a palladium version of Y instead of platinum that is part of Y).
The analogy (arrrg!) I've heard here is that if you want a bathtub of water, ask for the ocean -- it's easier to deny you parts until you get your bathtub and maybe a bit more, than it is to ask for a glass of water but you really want the bathtub.
Sure, this applies easily to chemical patents, but could also apply to business model or computer-related patents. When you read the patents here on slashdot, they seem to cover everything and the kitchen sink, but just like above, they are trying to include as much as possible to make the patent just that more valuable. If you want to see what the real meat of a patent is, the part that the company really wants to make sure they have, look at the Examples section or the support information, or look at the first claim, and nothing else. Consider every Claim beyond the first, especially those that start "The same as in Claim 1 expect where...", as the icing on the cake.
Not that I agree with the actions that those have these large encompassing patents, but this is how the patent field, as I've been exposed to it, seems to work. And it should be noted that for at least chemical patents, there *are* competent people on the patent board and generally frivolous patents there don't get issued, but as last I heard, they are still striving to fill positions for computer experts to help with the newer technology patents.
"Pinky, you've left the lens cap of your mind on again." - P&TB
"I can see my house from here!" - ST:
Dear Valued Former Employer,
// friend, you really need a lawyer
Thank you for the opportunity to participate in your
patent filing. As the principle engineer/programmer on
the project I am probably more familiar with the nature
of the work than anyone else. I can assure you that the
product depends on many techniques already in wide use in
the industry, and that many aspects of the invention are
obvious to anyone skilled in the art.
Sadly, documentation to support a patent filing was
never one of the deliverables specified for the project.
Consequently the project records are not in a form that
makes the project's reliance on prior art obvious. I look
forward to assisting you with clarifying this matter,
as I know you share my deep commitment to compliance with
the patent application disclosure requirements.
Since I am no longer employed by you I propose that
a consulting arrangment is the most appropriate way
to compensation me for the time and effort I expend on
your behalf. I am currently able to offer my services at
the rate of $250 per hour, one hour minimum per day, with
a limit of 10 hours per week, for three months, with the
possibility of renewal for an additional term. This is in
addition to, rather than in leiu of, any bonuses, rewards,
royalties, or other considerations normally associated with
such a filing, and the eventual award of the patent, which
are due as a result with my previous employment by your firm.
Please acknowledge your acceptance of these terms within
two weeks of receipt of this letter.
I look forward to working with you on making this patent
filing the success it deserves to be.
Sincerely Yours,
Your Name Here
#include "disclaimer/ianal.h"
Additionally, since they are a former employer I wouldn't sign anything anyway unless they are willing to pay you a consulting fee. I would suggest half to double your current annual salary depending on how you feel about your former employers. But don't guarantee anything. Make it clear that they are paying you to review their application, not buying your signature.
The way I see it, your employment contract ended with your employment. Obviously whatever NDA's you signed still apply, but that's it. You have no obligation to them anymore. Don't do anything for them for free. If you really don't want to do it, set a rediculously high fee. That way even if they try to take you to court you can say "I didn't say no, they just don't want to pay my retainer".
Under capitalism man exploits man. Under communism it's the other way around.
Sign it and then hire yourself out as an expert witness when others try to have this patent invalidated.
I have a number of patents, US and international, that I picked up over the years. Some were more original inventions than others. Based on what you have said, your former employer's request is probably reasonable within the current US legal framework.
The way patents work is to make claims that go from the very specific ("if I take a piece of this kind of wire and bend it just so, I can hold two sheets of paper together") to the general ("if I take a piece of flexible material and bend it so that it puts pressure on a surface from two sides, I can use it to hold light, flat objects together") to the ludicrous ("if I take anything, and do anything with it, and it holds anything together, then I invented it"). The nature of patents is that things that are "obvious" are not patentable, so your employer wants to protect itself against someone who uses brass instead of steel for a paperclip and claims a new patent. This is how the patent game is played, and your ex-employer is probably just playing by the rules. If it ever gets to trial, some claims will get thrown out, but some may stand.
Don't assume, unless you know otherwise, that your ex-employer is acting greedy and unreasonable. While patents are usually swords, they are also shields, to prevent others from claiming rights to something that you did. This frequently occurs because many people get the same idea at the same time.
Unless something is very fishy, you don't need to spend your money on an attorney or consult a panel of experts (this forum excepted!).
They cannot sue you for NOT lying. (Unless, of course, you signed a nondisclosure agreement to the effect that you would not reveal that they are trying to scam the US Patent office.)
If they did hypothetically put that clause in, the whole contract could be considered null & void. Contracts that would compel a criminal act are void, and conspiracy to give false testimony to the US government is definitely a crime.
I don't think anyone can be compelled to testify to anything or sign any document, even a civil matter. I guarantee that, as pointed out, this probably has the "true and accurate to the best of my knowledge" clause on it -- a sword that cuts both ways. They can slam you for giving false info if you sign, but you may optionally completely refuse to attest to anything...
This brings up another point I wonder about: most companies, when you're dinged for some offense in the employee handbook (e.g. excessive lateness), have you sign a statement that yes, you did commit this offense and were counseled about it. In one case I refused to sign such a document and in another case I signed it. Can an employee be fired for refusing to sign such a thing? (It's a moot point for me, as Virginia is an at-will state, but the question itself intrigues me.) If I don't sign it, is that to my advantage or disadvantage?
-- Old Man Kensey
If I were in your position, I would make my employer aware of my views on the patent, and request the courtesy of allowing me to attach my own review of the patent application before it is sent to the patent office. If they would not allow me to attach my own review of the application, I would sign my rights to the patent over to the company, and not sign the application itself. This would detach me from the patent, and make the point to my employer (especially if my collegues were to do the same) that the patent is not acceptable, on my terms, but they win because they have more money than I. If they know that the people behind the technology do not support it's uniqueness, then they may think twice, because in court people such as myself would be testifying against them. This is not idealistic, but it is practical.
They can't make you sign, but they will tell you they can. They will threaten you with lawsuits, and may actually go so far as to file one (this is EXTREMELY unlikely, but you should be prepared for it regardless). /. and I will send you money (as will others, I believe) to pay the piper. I will respect you and wish to support you - IFF you don't sign. If you sign, I will consider you just another protoplasmic blob wasting space and resources that could be used by somebody with a backbone.
If you end up in court, you can make exactly the statements you've made here - that you think the patent is too broad to legitimately apply to anything you have invented, and therefore it would be wrong to force other inventors to spent their resources breaking your patent (let's face it, the Patent Office will let anyone patent anything these days, preferring to let the courts do their work for them later).
If you were to lose in court (incredibly unlikely, but if you treat the judge or his cronies with disrespect you can lose regardless of the merits of your case) you might get fined a few bucks. Post on
If you are dead, you can't sign. So they won't kill you. The judge isn't going to send you to jail unless you call him a fat old clown, or refuse to bathe and wash your clothes before your appearance. So at most you get LOTS of nice publicity for being an ethical voice in a clamor of greedy amorality (that's something you may be able to turn into a better job, too!) and a nastly little fine that you can solicit donations to pay.
--Charlie
PS: I am not a lawyer, but I've successfully defended myself in court. Right makes Might, in the USA... unless you're up on drug charges, of course!
--CTB
PSS: Those of you encouraging our hero to knuckle under... how's it feel to be born without a spine?
--C
I am a patent attorney and have to deal with this situatio a couple of times a year. When a company laid off or fired an inventor before he/she could sign the declaration, inevitably that person doesn't want to sign it, for obvious reasons. In that case, there is a simple petition to waive the requirement for signature by that inventor; the petition is filed on behalf of the owner of the invention, which is the former employer. By not signing the declaration, you accomplish 0% of your goal of interfering with the examination of the patent.
If it is a minor patent and the company is just being careful, then fret not and sign. But if you are fretting enough to post to Slashdot, asking for a recommendation, I'd refer you to the Old Testament, where every time David found himself in a situation like this, he turned to prayer. God answered his prayers, and he did what he did knowing that God was behind him. Prayer works--you might need to take more time than you are used to waiting for an answer, but it's worth the wait. To actually answer your question here just leaves you a simpering idiot who has no spine, relying on others to make your decisions. You have to stand up someday, so why not when you've got a patent pending with your name attached? Why attach your name to something which is going to get its butt kicked by the spirit of Open Source, which is cleaner than stinky ol' protectionism and will event'lly prevail even if it takes a thousand years? Think long thoughts, which prayer cultivates.
information is immaterial
Hahaha :) That's how I am going to refer to my Cow Orkers from now on...
Outdoor digital photography, mostly in New Engl
Also, if the contract is for the duration of employment, could it not be binding anymore?
I am not a lawyer, and my advice to the original poster is to see a lawyer. I'm surprised your advice wasn't the same. :)
Just because it CAN be done, doesn't mean it should!
As a former patent examiner with the USPTO, I can assure you that it doesn't matter if you sign the patent or not. This sort of thing happens all the time.
If you work for a company the odds are that you have already signed a document that assigns any of your inventions over to the company. The assignee is the one who owns the patent rights, not the inventor, and it is the assignee who prosecutes the patent application through the PTO. But the legal document requires that the inventor sign the oath that the contents are true. But, there rules in the MPEP (manual of patent examining procedure) that control when the inventor refuses (or can't) sign the application. This sort of thing happens all the time because inventors die before the application is submitted, they don't sign because they got fired, etc. If you don't want to sign, then don't sign. It's just going to create some extra work for the company and more fees for the patent attorney, but that's it.
Frankly though, I think you really shouldn't judge what is patentable and what's not. That's the job of the PTO, not yours. Every patent attorney tires to claim more than they'll get because they know the PTO will reduce the scope of the patent. It's just like negotiating for a salary. You don't start off by saying your minimum offer, you ask for more on the assumption that they'll offer you less.
Regarless, I can guarantee you that the final patent will look nothing like the submitted patent because the examiner will fight to reduce the scope of the claims. Every patent this submitted to the PTO gets a first office action rejection because every patent examiner is told to reject on the first office action - this is called a shotgun rejection because they'll make up any reason they can to reject.
The best thing you can do is make sure that the patent application includes any prior art reference that you think are relevent to the application - including those that might even invalidate some of the claims. The examiner will read those and then make a judgement
A few years back, I found a novel way to use a binary tree. Mind you, that anyone with the need would have found the same solution I did, but the company decided to patent it. I had to sign it over, just as you do. What got me was that I couldn't recognize what I did in all the legal jargon. On top of that, my boss, who did nothing for the task and doesn't know the math behind it, got top billing on the patent. The patent is a joke to anyone who understands it. The whole patent system is a joke. -Anon.
A former employer of mine started down the software patent path for something I designed. I pointed out vigorously that the "invention" was an obvious combination of something I had implemented at a past job, and something which someone else had productized. Shortly thereafter, I was informed that they had decided to suspend the patent process...
If you had to sign over IP, then they rate you as being 'signifigant' in the creation of the idea. That means you DO have some control over its FORM, if not how they pursue it. IE, if they see you as an inventor, you are obviously qualified to an expert opinion on the extent of the idea. If they try to claim you aren't an expert on the patent, then they wouldn't have tried to get you to so\ign off on it! Legal Catch 22, but in your favor.
I'd get ahold of a IP lawyer, explain the scenario, and see what your options are. No doubt, you have personally lost any rights to the patent other than bragging rights by signing over the IP whever way back, but you still have at least partial control over the description.
I put down ink on an agreement with my current employer (large! company) that says anything I do while I work for them and up to six months after I quit is theirs, and I agree to help them patent it to the best of my ability, promptly, etc, etc.
... getting sued is.
So getting fired isn't an issue with a lot of these contracts
dv
"There's no secret. You just press the accelerator to the floor and keep turning left." -- Bill Vukovich
Going through all the discussions about patents ... I think we (including me) have developed a knee-jerk reaction towards patents and their holders. Although the real problem may lie in the legislature and the executive (the patent office in this case).
:)
Its similar to the way copyrights don't necessarily restrict people from using creative works (though often they do). I think the whole concept of intellectual property needs an overhaul to catch up with technology and rampant misuse.
I've heard of people patenting recipes such as Indian Chicken Curry (yes 2 Japanese got smart
... now something like that not only needs to be denied etc. but should be punished so that people don't try to make a quick buck.
At the same time people like Linus (yes he does hold a few patents - in the chip design area) who have come up with real solutions to complex problems (after lot of hard work) need to rewarded for their efforts. Someone should not be able to copy techniques they have developed without their permission.
I think patents have a positive side as well.... they allow people (specially corporations) to fund and publish research. This benefits the scientific community immensly. I think (i think their already is) their should be a clause that allows someone to use patented "intellectual property" for educational/non-commercial use without prior permission.
We need a broader debate on "intellectual property" rather than knee-jerk reactions.
It depends on _how_ you don't sign it. If you are normal, or don't care about the consequences, you are right. But what if you quit your job and start picketing the company, drawing media attention, and starting a minor revolution or contributing to the greater one? Someone's gotta do it. -Water Paradox
information is immaterial
Having talked to the companies councel, and to a firend who is a lawyer in the IP community, it appears that company has rights to inventions that you make for them. The assigment of IP form, is just a formality.
If you dont sign it, then they dont have to put your name on it. One of the reasons that they want to you sign is so you cant contest the patent at a later date.
As for after you have left the company, after 10 months, I am reviewing 3 patents that I did while still there, and the company is going to pay my the stanadard $$$ bonus as if I were still employed. They could file it without my name, but it is cleaner for them to get it.
Are you paranoid if you know that they just want to know everything you say and do?
Read the documents and sign them only if they describe the situation. If you have reason to believe that the invention is not novel, for example, then you shouldn't sign. If you don't believe that you took part in the invention, then don't sign. Etc. Remember that it's not up to you to decide ultimate patentability. The application will start the process whereby a patent examiner tries to shoot down the claims by presenting prior art and/or by making arguments that the invention is obvious. It's an imperfect process, but at least it's (mostly) a level playing field.
three words:
find prior art.
I'll first echo the others here who have stated that you should get your own lawyer who can review your employment agreement and discuss the situation with you.
Second, you should know that there are proceedures for prosecuting a patent application over the objections of an inventor. The inventor (you) will still be listed on the patent and the patent will still issue in your name even if you've actively refused to sign the oath/declaration . If you also refuse to sign the assignment, your former company may end up suing you for breach of your previous employment contract (note that just because you've left the company your obligations under your employment agreement haven't necessarily ended). Also, your refusal will not appear on the printed patent that most people see -- it would only appear in the file history which is only generally seen during litigation/licensing negotiations/enforcement.
Third, you may want to take some time and talk to the attorney drafting the application for your company. He/She (he from here-on-out because I'm lazy) should be able to explain to you the differences between what is described in the patent application (typically called the detailed description) and what is claimed in the patent application. For example, most patent applications describe various elements necessary to understand the invention, even though those elements aren't actually going to be claimed. What is claimed defines the scope of coverage of the patent.
Fourth, you've have no duty to search for/find prior art not within your knowledge. However, if you feel that the attorney has drafted the claims too broadly (i.e. the claims attempt to protect things that others have already invented), you need to communicate that to the attorney drafting the application so that the application can be drafted more correctly. Your company's policy on searching for/finding prior art may vary. However, providing relevant prior art with the application results in better prosecution on the patent office side and a stronger patent in the long run.
Good luck!
DISCLAIMER: See professional legal advice from competent legal counsel. I don't know all the facts and am only providing you some general information about patents -- do NOT rely on this information -- speak with a lawyer! I don't represent you. Any opinions herein are mine and not those of my employer or anyone else.
If you are asked to hand over the patent for some you work on at home, thats a different story.
until (succeed) try { again(); }
until (succeed) try { again(); }
heheh word to that
> A company I used to work for has written up a patent application
Well, since you used to work for them, are you STILL under any contractual obligation to sign with them?
If you signed one, you're obliged to cooperate. Some of them require you to cooperate for up to 6 months to a year after the end of your employment. Some of them even go so far as to state that the company, here after known as the company, owns everything you ever think of, anytime of the day, anywhere. Don't any of you guys read those things when you sign them? The sign in blood requirement should have tipped you off.
I was in a similar situation less than two months back. In my case, it was not about a patent that was too broad or over-reaching. It was about a patent for an incredibly obvious and simple use of some data. What's worse, while the method was totally software-based, my company was trying to pass it off as something more than your regular "if-then-else" hack.
I refused to participate. My problem was not really the management. In fact, the PHBs probably didn't even know that there was a potential patent application going on. It was rather my co-workers, you know, oh-so enthusiastic, "Ooh, ooh, I am actually applying for a patent".
I told my co-workers "No" and quit soon after (due to other reasons too). Of course, I was a small fry in the organization and have no delusions about being missed. Most likely, the patent application will be rejected (on grounds of being too obvious). If it does get through (obfuscated by overly technical jargon), it still won't be of any likely consequence. If however, eventually it is used as a tool to persecute somebody, I'll be around to say, "I was one of the, ahem, "inventors", and the patent was filed without my signature".
Sreeram.----------------------------------
Observation is the essence of art.
a. has experience in the field
b. is licensed in your state
c. isn't working for your company
If you're really that worried, then what you see here will give you some questions to ask your lawyer, but that's it...don't do anything until you see a lawyer!
=h=
This is America during the Roarin' 21st!
Don't sign over your ideas..
Start your own damn company, take it public, retire at 25, marry a supermodel, and join a board while you sail on your yacht, ok?
Geez.. some people are so... narrow minded.
;)
Chris
The next comment I write will be ready soon, but subscribers can beat the rush and see it early!
I was in a very similar circumstance about six months ago. The company I worked for (one that gets a lot of /. press -- and boycotts) was patenting something I worked on that was AMAZINGLY obvious and broad.
Of course, the company lawyers in a Northern State decided to patent it. They worked over the patent disclosure, sent it to me to sign, and acted as though they were expecting me to be excited to have my name on the patent, rather than ashamed.
My response took some time, but I reread my emplyment agreement and the NDA/etc. I had signed. I had given them the right to patent anything I did for them and it was their work -- fine. I agree with that, I just don't want to be a party to the abuse of the patent system. I decided from my reading (like everyone else here, IANAL) that they could patent it without me, especially since a developer at the company who should know better was quite excited to work on the patent (we had worked together on the project, and her background was PARC, so I should have expected her attitude).
I told the lawyer that they didn't need me. I sent them an email stating that I would have nothing to do with the patent in any way and that satisfied the lawyers. They knew that they could patent it without me. They realized that I wasn't going to contest the patent and try to steal it from them. I keep my hands clean as I could find a way to. Everyone's happy(ish).
I *did* have the priveledge of telling the Head Cheese of the company off about it in a public forum he created to discuss patent issues shortly after he appeared on the cover of a major national magazine. That was fun. Then, I quit in a few months (over many things, not just that).
I never checked to see if they kept my name on the patent or not. But they didn't use my signature.
And now I make sure any client knows that if they want to patent something I do for them, they can't count on my help. I'll read the patent paperwork and make sure there's no technical mistakes, but I won't sign anything for them on it.
Xowl
Seth Morris
I have seen lots and lots and lots of /. stories about this stupid Patent Office of your country. I really wonder what will be needed for you (Americans) to decide to put it down. After all, you live in a democracy, don't you? That means "People's Government", so why don't you exercise your vote and kick these stupids off the Patent Office? Isn't there a single of your candidates that promotes a sane patent system, not a brain-damaged one? I'm really worried that the world is technologically led by a country with such a fundamental problem in the main path of technology.
Regarding the subject, it's clearly an ethics issue. If it's against your conscience and you can afford being fired, don't sign it. If it's against your conscience but you can't afford being fired, don't sign it. If it's not against your conscience, sign it. If I were you, I'd start looking for a new job anyway, but I'm strongly commited to my professional ethics, which might not be your case.
Reality is a mass hallucination due to lack of alcohol in blood. - DeadLiver
That remark made me wonder what planet Dickinson lives on, where the inventor is in a position to "commit them to the public domain". That one comment makes it clear that the concept of a patent being owned by the corporation the inventor worked for is one that just doesn't come into his mind.
Which really makes you wonder whether he understands the patent landscape at all. Is he still living in a world where humble, hardworking inventors apply for protection for their innovations from a benign Patent Office, which enables them to profit from their inventions?
It's admittedly a lot to read into one sentence, but.
But my agreement only required me to sign that any rights in the patent were the company's, not that the patent was valid or that there were any such rights. Effectively I was helping the company learn that attempting to patent software involves giving lots of money to lawyers for no return.
Of course, they may be slow learners ;-)
Peter
IMO the ethical ambiguity you find yourself in results from an ambiguity in your relationship to the company and to the invention in question. Ethical ambiguities are usually caused by such things. In this case, your status as an inventor is a priori questionable both because you are no longer employed at the company, and because the agreement you signed makes your status as inventor one in name only.
The usual thing a company wanting to file a patent "in the clear" does is ask the parties who might contest it to sign waivers of interest, stating that they won't challenge their free ownership of the invention. That waiver then amounts to a contract. That the company wants to list you as a co-inventor complicates things, and implies your relationship to the company and to the invention is stronger than it seems from the facts.
Here's what I think: You are no longer employed by the company, so you are no longer responsible for their actions. You shouldn't try to influence them.
If, in fact, you believe you are a co-inventor and believe you have rights to the invention, I think you have some standing with the Patent Office and can negotiate a better situation for yourself. For if the company didn't settle up this issue when you left their employment, they lost some control of the invention. The grey area is when is this invention considered "invented".
OTOH, if, as you say, you don't believe the invention should be filed at all, while you cannot control what the company does and shouldn't try to, you can refuse to sign as co-inventor but offer to sign a waiver of standing or claim or whatever it's called. I cannot see how the company can force you to sign as co-inventor. Your agreement didn't specify that. It simply said all inventions made during your tenure belonged to the company.
Best of luck.
Jan Theodore Galkowski, (Oo) http://www.smalltalkidiom.net/ MySQL,PHP,ETL,SQL,MinGW C, and plucking the Web
I can't believe the people here telling you to sign it. Do NOT do it!
You are required to turn over any inventions that you create as a work for hire to the company, so that you are forbidden by contract from keeping them for yourself. THIS IS TOTALLY DIFFERENT FROM COMMITING PERJURY TO CLAIM NOVELTY OF INVENTION WHERE THERE IS NONE
You should send your former employer and the patent office a letter stating that (1) you do not believe the overbroad patent application should be accepted, because it does not properly represent a novel invention and that (2) you reaffirm that you have relinquished all ownership of any existing patent rights to the company for this invention, but in doing so you will not join them in falsly claiming that any such rights actually exist.