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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?"
I'd probably just send in an "Ask Slashdot" question to find out. :o)
Mas vale cholo, que mal acompañado.
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/bin/fortune | slashdotsig.sh
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.
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!
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.
- 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.
I would LIKE TO have you know mister that I for one did indeed read the article in it's upmost fullest and understood it to....
HEY! Look an airplane!
Sig it.
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.
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.
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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...
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)
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.
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Stop worrying about the risks of nuclear power and start worrying about the risks of not using nuclear power.
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.
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)
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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
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!
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,
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.
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:
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