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?"

Comments

Inventors Duties Generally

[Artagel]

In general, there are steps to this process that are manadatory, so make sure you are ready for them.

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!

Re:Inventors Duties Generally

[Pilot4322F]

I have been in your position before. You are probably tied up pretty tight in your obligations to sign the patent app and to assign your rights to the company.

However, you are under NO obligation to sign a patent app that is not properly executed. Such poor execution actually decreases the value of the patent and leaves it open to being set aside later.

Your best strategy is probably to be extremely helpful to your former company. Make the app as good as you possibly can. This will mean numerous revisions to the app. I am an engineer and I have been through application preps that have had twenty or more revisions before submission. You can wear them down doing a good job.

They may then abandon the idea as not feasible. You may also be in a better position to just be left off as an inventor after 10 or 20 go-rounds. You will also be in the loop over the next six or more months and from the standpoint of being an extremely professional, helpful former employee can make an excellent case for NOT patenting this idea.

For example, under the new patent regulations, and under all foreign patent office rules, the wrapper is laid open in 18 months whether the patent is granted or not. Does your company really want its secrets and all correspondence with the USPTO laid open to competitors in a year and a half if this patent is not granted? This means your good, but not patented, idea is open to everyone, including those in places where intellectual property is not recognized (like China.)

Does this company want to spend all the money involved in getting a patent that would be difficult and expensive to be granted, and if granted, difficult and expensive to defend? Isn't there a better use for their R&D budget?

Why not be an agent for positive change while still getting what you want?

Also, ask yourself, how would you feel if the patent was granted, but your name was not on it? Slighted? Just fine? Well, if just fine, ask if you may be excused from the process and explain why your contribution was not that significant. Remember, the named inventors must be involoved in the CONCEPTION of the idea. If you were only along for the "reduction to practice" (writing code, building hardware from someone else's directions, sketches, drawings you are NOT an inventor!). And, not being an inventor, have no business having your name on the app.

Good luck. This is one of the fine points of every engineer's or tech person's career. Make sure you do what you feel is ethically right.

Read the post!

[Paladin128]

• 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!"

Please see an attorney.

[David Hume]

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:

My IP agreement with the company forces me to sign over any inventions,

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.

Patent examiners

[XNormal]

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.


----

What Patent Office Director Dickinson has said...

[braddock]

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.

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/ 24/PizzoFiles2.html

-Braddock

Do get a lawyer

[Mr Z]

Given that he's no longer an employee, can they force him to do squat?

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
--

Somewhat OTP - Broadness of patents

[Masem]

According to what was posted, it is sugggested that the guy's idea at former company X was written into a patent and then more fluff was added then the guy deamed necessary to be patentable.

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.