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Ask Slashdot: Handling Patented IP In a Job Interview?
ZahrGnosis writes I'm in the midst of a rather lengthy job interview; something I haven't done for some time as I've worked as a contract employee with a much lower barrier to entry for years. Recently, I've started patenting some inventions that are applicable to my industry. One hope is that the patents look good to the prospective employer on a resume, but I don't want them to take the existing IP for granted as part of the deal. I'm worried I have the wrong attitude, however. My question is, how should I treat licensing of the patent as a topic with respect to the topic of my employment? Should I build the use of my patented ideas into my salary? Should I explicitly refuse to implement my patented IP for the company without a separate licensing fee? If I emphasize the patent during the interviews without the intent to give them the IP for free, is that an ethical lapse — a personal false advertising? At the same time, when I work for a company I feel they should get the benefit of my full expertise... am I holding back something I shouldn't by not granting a de-facto license while I work for them? I perceive a fine balance between being confrontational and helpful, while not wanting to jeopardize the job prospect nor restrict my ability to capitalize on my invention. Thoughts?
For each job it will be different.
How good is the salary already?
How much of the value of hiring you is your porfolio, and how much is your blood and sweat value-add?
If Nasa wants to hire you as a $50k per year janitor so they can use your warp field equations, it's different than if Amazon wants you to be their Cheif Architect and incidently likes your 5-prop drone patent.
Create proper price tags in your porfolio for the value of your patents, whether it's per-click or per sold unit. If you get a dream job, like janitor on the ISS, throw them in for free. If it's not, offer a discount, or say they aren't included.
If so then fuck off.
And not licensing the IP.
Assuming you just recently filed applications it could take years to issue if they ever do. Think you could hype the technology and mention they are patent pending and see if they ask about usage issues. But, I'm not a lawyer.
Mencken had it right. So glad that's old news.
Yes, you should explicitly refuse to implement your patented IP for the company without a separate licensing fee. This is completely separate from employment.
In particular, you don't want to use your IP in their product without a licensing deal in place. That creates a conflict of interest situation, one likely to result in litigation later. What if, later, you sold your patent rights to another party and they sued your employer? Your employer could then sue you for putting them in that situation.
Bring in a lawyer. Welcome to the big time.
Assuming that you are negotiating your contract you can very clearly outline what is and isn't part of your hiring. Don't pussy foot around the subject. If you don't want to share your IP then explicitly tell them they are just examples of past experience.
If it is not part of the deal then leave it off your resume.
I think you are confusing two different situations in an interview situation.
1. You working for a company.
2. A company licensing your patents.
Leave the patents out of the process at this point.
your patents are your patents.
giving them the IP for free is crazy talk. Should they actually be valuable, the company should be paying fair market value and evalutating them just like any other business transaction and they would be separated from your job.
Meanwhile, talk to a lawyer. Now. BEFORE the interview.
Absolute statements are never true
The real question is: are you applying for a job or are you trying to license your technology? In all likelihood, a blended negotiation is probably not going to happen unless: 1. you're looking for work in academics/advanced research or 2. you're a pre-eminent engineer/scientist being hired for your contributions in your inventive space.
If you're applying for a job, then the recruiter probably doesn't want to hear your invention pitch. The recruiter probably doesn't care about your patented stuff other than perhaps an aggregate count: e.g., I'm a named inventor on 3 million patent applications. You should be focused on what your qualifications for a job are.
If you're afraid that once you get the job that you're going to be deprived of a subsequent royalty stream, you should review your employment contract and should just flag that as a concern of yours. I suspect you're unlikely to get much value for your IPs from your employer, but at least the paperwork will be clear as to rights to use, the existence of the inventions prior to employment, etc.
If you're talking about trying to license your technology, then you need to talk to the right people. Probably their patent attorney or the person in charge of in-licensing technology. This is usually a protracted negotiation.
Last point, on your moral quandary: your patent probably doesn't stop you from deploying your full efforts at a job. It might stop you from implementing your own patented invention. But, on that point, you're the gatekeeper of your own invention. If you elect to deploy your patented invention as part of your regular work, you shouldn't expect compensation for it unless your employer asks you to.
...not your patent portfolio.
If they want the use of your patented IP, they can license the technology or buy the rights to the IP from you.
Any sufficiently advanced technology is indistinguishable from magic.
-- Arthur C. Clarke
If you want to money for use of your patents, go sell patent licenses. If you want a job, be clear that you are there to work and your patented work is off limits (I am assuming you personally hold the patents). When we interview patent holders I grill them on the patent since it is clear piece of representative work I have access to, but I have never considered that their patents come along for the ride (usually they are owned by some other company).
When it comes to proprietary IP that is not patented, I steer a wide berth to avoid any chance of making it look like they need to share their protected knowledge to pass the interview. If it is on their resume I generally ask for enough description to understand the gyst of what they are working on and will ask industry standard design questions, but I do my best to stay far away from anything that makes them squirm.
If they're hiring you for a job, they want your brain to solve intellectual problems for them. What that has to do with patent licensing is beyond me, unless their employment contract says you're a property of the company including your previous work and your soul. (And that still might be void.)
Ezekiel 23:20
If you aren't bringing anything to the table then you aren't going to do well in the interview, if it's skills or IP, and you are going to put values on those things. You don't work for free because your skills are valuable. The trouble you may have with IP is how much you separate its value from the value of your skills - especially considering your IP could be usefully mined for years past your employment. Most professionals bring IP to companies they join, patented or not, and they absolutely use that as leverage in an interview. You should take the time to properly assess the value of your IP and present that in an interview. You have a tough balance of making the case that your IP is valuable without coming across as greedy or misinformed. If you put no value on it then it won't be seen as having value.
X
Seriously, talk to a lawyer. I am not at all versed in various IP /employment laws and I assume you are not either. I have no idea what can go wrong, but you need to know these things. Have that lawyer read anything you are going to sign. You do not want to sign away your rights accidentally. Once you know the finer details of the relevant case law, you can decide how you want to approach it. If you are an employee and you do not want to share your patents and your employer uses them anyway, what happens then? Are you going to sue your employer? Corporations are soulless entities that will suck whatever life/power out of you that you let them. Work on the assumption they are out to screw you and prepare appropriately.
and what job position are you interviewing for?
If it's a regular job and not research, I'd say don't bring it up. Even if your patent has nothing to do with this company's business, they might think you'll bail out of the job as soon as you make $$$ from your patent.
Or if your patent is still pending, they might think you'll spend more time trying to get your patent awarded. Basically another distraction. Kind of like how employers disfavor workers with young children.
Hi
Why don't you create a limited company, then you sell your patents to [your|the] company for an undisclosed sum and then pretend you had success in patenting and selling your patents.
You achieved two goals: You can put your legitimate patents in your CV and the patents are not part of the deal because they are now in the hands of a legal third party.
Cheers
Nicola
You probably disclaim enforcement of the patents as part of your normal employment agreement which should pretty much solve everything. They are included. The patents themselves don't make you more valuable, but rather the skills required to get them. That should be reflected in salary negotiations. If you bring up the subject during an interview, you will strike fear into the heart of the person interviewing you. Before they can make an offer, they will have to consult legal, HR, and a host of other corporate entities whose knee-jerk reaction is always to say no. Impress the potential employer first with your technical skills and personality and then with your excellent salary negotiation abilities! Consider yourself well compensated for the patents.
Obviously employment and patent licenses are two completely different things.
Bottom line you basically could lead your new employer into a situation where 'he' is infringing 'your' patent.
Obviously it could be opposite around.
I would not trust any /. advice, except: consult a competent IP/patent lawyer.
Cost free eBook I read (by iBook/Kobo/Amazon/ObookO/Gutenberg etc.): "The Green Odyssey" by Philip Jose Farmer.
Well here's something we don't see everyday: a "story" about job interviews on SlashDice!
You should implement your patented IP and then when you leave you should sue them for patent infringement!
I'm trying to teach myself to set people on fire with my mind... Is it hot in here?
If you have a patentable idea but no patent, your employment effectively makes your new employer an investor in a future patent filing- and they will expect you to assign it to them as an employee. Most employment agreements have space for your to list your various existing ideas, but good luck when it comes to defining existing versus new.
If a patent does exist, who is it assigned to right now? Whoever that is has an opportunity to license it, and can use you as a vector. Even if your new potential employer doesn't wish to license, they may feel that your field of expertise is your truest value, but you will find yourself wandering into areas you have explored, and no doubt find applications for the patent.
The idiots that tell you that they would never hire anyone who has a patent are just that, idiots.
I own a successful company with nearly 100 employees. The fact that you have patents shows that you're not just a run-of-the-mill employee like these wannabes who are decrying the fact that you have a patent. Of course if you come to work for me, you will sign an agreement signing anything you invent while you work for me to my company. That is part and parcel of the deal these days. I would not consider you to be a problem employee I would hope and expect that while you work for me he would generate patents for me. If the idea of generating patents for me and not getting any other benefit out of it chafes at you, then you should not be out searching for a job. You should instead find a way to monetize and licensure patents so that you can work as an individual inventor and secure more patents for yourself.
If your patents were somehow relevant to my business, then we would potentially have a separate discussion about licensing. If you got the patent and you own the patent then any financial value to it is yours not mine. I think it is wrong of me is employer to expect you to just give me the use of your patent. If you feel like it, then go ahead. Especially as some have mentioned if it's a dream job and the commercial value of your patent is not much.
If your patent was somehow a fundamental advantage to my business, I would want to license it from you and keep it out of the hands of my competitors. Or at the very least negotiate most favorable terms from you.
So no, I see no situation where you owning a patent would be a disadvantage. Unless, of course, you're trying to get a job with some Slashdot pinhead.
Incorporate, and place your patents into the corporation.
Then state that you share ownership in the corporation and list the achievements. And only if necessary make a direct statement to remind them that you're patents are owned by a corporation that you are a major share holder. You don't need to state that you may be the only share holder.
You shouldn't give away anything that you own for free. And if any corporation thinks that they can get something for nothing, shame on them not you.
Really, do what you're comfortable with. The license is for you to write however you like it. If they come back and say "nope we won't hire you without a full patent transfer" then its again, your decision whether you're comfortable with that or not. You can always say no, or negotiate further.
One thing to be absolutely sure of though: Get it all in writing, and have a lawyer review it if you consider your IP worth anything in the first place. Nothing would suck worse than signing a perfect agreement only to discover a year later that there was a loophole you'd overlooked and now you're out on your ass.
What you should have done is created a holding company to "own" the patent. This creates a disconnect between you and your patent. It would be much like when you work on a patent for a company. You can list it on your resume/cv as something you worked on. I'd be worried if someone applied for a job with some patents in that industry that made a point to use that to get the job. I'd see it as a ploy to go "If you hire me, you have to also license my patent". Hell, if I found out you owned the holding company with the patent, I'd probably not hire you for the same reason.
If you take any other advice here, you are an idiot. Not one person here can honestly tell you what to do unless they are part of your negotiation.
If you advance sufficiently far, you should be able to get some basic contacts for the company. I would ask the legal team there what advice they have. But if you take my advice without asking a qualified lawyer, you are an idiot.
Don't ask legal questions here, and don't follow any advice given. Especially this advice about not following advice.
This sounds like a tough problem -- you've thought about it, examined many angles, yet cannot find a clear winner. So time to bring out the PHB decision tool, Flip a Coin!
Seriously. You've examined all the alternatives rather thoroughly with more data & values than we can know yet cannot determine a winner. They must be evenly balanced, so a coin toss (PRNG) is as good a decision method as any other. If you insist on persistantly over-thinking this question, then devote your efforts to finding something _new_ that turns the question into a slam-dunk.
ObOnTopic: If you mention the patent, many HR types will assume you assigned it to a previous employer. They might be impressed, or they might worry their software will be contaminated/infringe this other company's IP.
Employee hereby assigns to Employer any and all intellectual property rights which Employee currently possesses,
So how do your prospective employers handle IP that you have already licensed to someone else? Perhaps a previous employer. Maybe even one that, if confronted over the issue might just buy out your new employer, disassemble them and bulldoze over their HQ?
Have gnu, will travel.
The potential probity issues of having an employee who is also a commercial supplier
Are you a government contractor? If so, I understand your position.
Otherwise, employees with financial interests in suppliers was pretty much SOP at a few places I've worked. People think nothing of replying to, "Why are we selecting this vendor?" with, "I get stock options from them."
Have gnu, will travel.
For each job it will be different.
No, and no.
Patented IP belongs to the patent holder. Employment is a different issue altogether. Under normal circumstances, they are legally completely separate issues... so why would you want to mess that up?
If you want employment, make an employment agreement. If you want to sell, lease, rent, or royalty-license your patents, then do that.
Why would you want to confuse these things and mix them up?
Lots of employees have written and filed patents. Employers are fully aware that these patents are the property of other companies and they can not use them. Your situation is different only to an insignificant degree.
Worse than useless in fact.
If I were hiring you I'd be concerned that you would use your patents against me if we have a dispute later on. Of course I can work out a special agreement with you where you agree to automatically license to me any patents you hold. Or... I could hire that other guy I like about the same as you but who doesn't come with any special legal issues to resolve.
As for be *impressed* by the fact that you hold your own patents, I wouldn't be, given some of the silly patents that I've seen. Holding a patent is not, per se, impressive. Inventing something truly novel *that actually gets built into products* is impressive. It's accomplishment, not the recognition of the patent office.
My father-in-law designed the gyros used to guide the Apollo spacecraft. That's impressive, but so far as I know he never applied for any patents on his work. One of my friends from MIT designed a flat transfer case that can be retrofitted onto a transverse mounted front wheel drive car designs to make them 4WD. It's in use on cars by several manufacturers. It's patented, but that's not what makes it impressive. What makes it impressive is that it is a practical solution that nobody every thought of before and other engineers are eager to use.
In fact, I might well terminate a hiring interview if you began describing patents *you personally* held relating to my work. Why? Becuase if I don't hire you I don't want you coming after me for triple damages for knowingly infringing on your patent. Even if that patent won't hold up to litigation, I don't need that problem. It's the same reason that I tell coworkers barging into my office with "Have you seen this patent" on their lips to STFU. If it's really novel then I'm unlikely to infringe on it. If it's a bad patent then I'm better off not knowing about it.
Post may contain irony: discontinue use if experiencing mood swings, nausea or elevated blood pressure.
Then I would put on the resume that you hold patents, but I wouldn't put down what they are. If they want to know then they can ask. Same thing as I do with my references i.e. "references available on request".
I get it... you're confused about what the interview process is.
This is a sales pitch. You are selling yourself to that company.
If they were trying to sell you their product, do you think they would hesitate to suggest it came with lots of things it really didn't?
In fact, do you really believe all the perks they suggest are part of the job will come as easily as they'll lead you to believe?
Of course not.
Let them believe what they want. Show them your "Stuff" and if they assume they get to use that for free, make sure to correct them after you're hired. If they aren't signing a contract for your IP during the interview, they have no right to anything just for hiring you.
Don't feel bad, I'm sure you'll find out all about what "Vested" means post-hiring as well and they certainly wont bat an eye. This is a game, play it.
If the company doesn't insist on a license agreement then walk away. Any lawyer worth his weight in rice would insist on a license agreement. If the company can't get that right all on their own they don't know enough about intellectual property to work with.
I have a handful of patents where I'm listed as the Inventor, and have some experience in this area.
First off, my case is somewhat different form yours in that while I'm listed as the inventor, the patents in question are owned by one of my former employers, as I came up with the inventions during my employment with them. While this does have the downside of my never being able to monetize them, the upside is if a prospective employer can't really pressure me into giving them anything for free -- they get to take that up with the cadre of lawyers retained by a certain corporation associated with the words "big" and "blue".
So here's a few (hopefully helpful) tips and ideas, based on my experiences:
Yaz
"I'm in the midst of a rather lengthy job interview; something I haven't done for some time as I've worked as a contract employee with a much lower barrier to entry for years. Recently, I've started patenting some inventions that are applicable to my industry."
Can we see these patented inventions?
Your patented IP is essentially part of your resume. If you wish to mention it to showcase your skill, you are welcome to it. That of course in no means makes it available to the potential employer without them paying for or licensing it just like everybody else. No more than someone working as a bartender at a different bar would be expected to share their tips with the new bar.
However, keep an eye on the details of any contract you sign as I've heard that some companies like to slip evil little lines in them that give them rights to anything you make, or work on during the time period you are employed by them. I've heard that some even make claims on things made afterwards. It wouldn't surprise me if some unscrupulous companies also tried to claim prior creations as well.
Obviously, you want to refuse to sign anything with that kind of bogus IP looting involved. Definitely have it removed first, and be suspicious of anyone that would try it in the first place. Since most people don't speak legalese, make sure you have a lawyer go over the papers to make sure there's nothing obfuscated and lurking in there to bite your backside.
(ianal)
Like Jane Q., meerling and some others said. Showcasing your work as an example doesn't put them up for use by the company as a term for employment. You're under no obligation to let them use your IP just because they employed you and if the use of your IP is a condition of employment I would run from that employer. Your employment and IP are completely different animals and you should keep them separate. If a company wants to use it they can license it, but keep that deal far away and separate from your employment. Let a Lawyer well versed in IP law handle it. Don't even think about doing it yourself. It can only lead to misery in the future.
Specks
Batteries not included
I solved this by patenting the white lie
Table-ized A.I.
It's worse than that. If the company you apply for a job at has any interest in the patents, chances are that they will not offer you a job.
The problem is that you selling/licensing patents to them while an employee will easily be seen as a conflict of interest.
If they want you and the patents, I believe they may require you to sign over any and all IP to them as terms of employment, compensated by a signing bonus.
If having principles means letting only assholes get their way then your principles have issues. Not working with the system is not the same as fixing it.
Why does Slashdot even have an Ask Slashdot section if none of the editors are ever going to post "Ask Slashdot" stories in it?
'The tyrant will always find pretext for his tyranny.' - Aesop's Fables
If they're your patents, issued before they hire you, then whether they hire you isn't relevant. Simply hiring you gives them no right to your existing IP. If they want to use the patents, there has to be some sort of contract giving them that right. And they should know this.
One caveat: some employment contracts will have overly broad IP terms, so if there's a contract at all, make sure that it doesn't give them any claims to anything invented before you worked there, or done on your own time on your own equipment. That's the law for California, so common in the software industry, so their lawyers should be familiar with those terms. If there's no contract, there's no issue.
My advice would be to talk about the patents because that's a valuable achievement, proving that you know how to file patents and you have invented things that were patentable. But I wouldn't be the one raise an issue around licensing the patents, because that sends the wrong message - if you're too worried about defending your IP from them, rather than focusing on how you can help them succeed, that tells them that you don't trust them, and you're more concerned about what you get than what they get, and companies want to hire people who bring value to the company, not just extract payment. If they value the patents, they'll ask you about them, and when the time is right you can discuss terms if appropriate. But don't do it in the interview process - that's premature.
Enable 3D printed prosthetics!
"in recognition of the compensation being offered and accepted by Employee, Employee hereby assigns to Employer any and all intellectual property rights which Employee currently possesses, or may come into Employee's possession during the term of employment by Employer."
That's brutal. I will absolutely look for that; thank you for that perspective and your input.
Every employment contract I've signed has a separate form to explicitly enumerate all your pre-existing Intellectual Property (patented or not). This benefits both the company (in strengthening their claim towards owning things you come up while working for them) and you (in that it establishes that you had the concept prior to working there).
I think that would depend on whether you were producing new inventions while in their employ, or simply licensing preexisting patents to them. I don't see any conflict of interest in the latter.
In fact that brings up another important, and related, issue - look at that employment contract *carefully*, it's quite common for an employer to claim ownership of all "IP" you produce while you are in their employ, including stuff created completely on your own time. The rationale being that you were probably at least thinking about it on their time. Supposedly most employers are quite negotiable on that bit beforehand, they may even have alternate contracts at the ready, but if you don't catch it when you sign your contract then they've got you by the short hairs.
--- Most topics have many sides worth arguing, allow me to take one opposite you.
Since you didn't list your actual patent numbers, and you seem concerned about your employer using your patented IP, I have to assume that you see your patented inventions as trade secrets. In other words, you are worried that your employer might use your patented invention without your permission. If so, then you're doing it wrong.
The idea of a patent is to make the details of the invention totally public. In other words, a good patent application essentially gives any person "skilled in the art" the necessary information to recreate your invention. The IP itself is protected through licensing, and if someone violates the licensing terms, through litigation. Once the patent expires, it goes to the public domain, so that the entire world can benefit from recreating the invention.
If you want your invention kept secret, then for goodness' sake don't patent it! Keep it secret!
This is what many "inventors" don't understand. It's up to you to legally protect your patented invention. There is no patent police to enforce your patent protection for you, you have to go to court to enforce it. For us "little guys," a more effective tool is secrecy...use your ideas to create something useful, and don't disclose how you did it. If you can't make something useful with your invention, it probably isn't worth what you think it is.
Selling your invention to only one licensee (your employer) is not a money-making proposition. You need to sell your invention to many customers for it to come close to paying the costs of getting your patent through the USPTO. If you become an employee, and withhold your best work from them because you have a patent, the employer will see you as having divided loyalties. You will be LESS valuable to them, not more. So if you are patenting your ideas in order to look good to an employer, then list them on your resume and be done with it.
THIS. Mod Parent Up.
Better idea: don't mention you own patents in your job interview. Who wants to hire a patent troll? (I'm assuming this given how else would not using your "patent" affect your quality as an employee?)
Don't waste your vote! Vote for whoever you want, unless you live in a swing state it won't matter anyways
Just create a company to hold the patents. Hire consultant to negotiate licensing in exchange for a cut of the royalties. You keep the rest as sole shareholder.
This leaves you with most of the profits while putting the licensing at arms length.
So your patent is in your own field of work. Let's say it's an algorithm for doing X. Now, your new employer asks you to solve problem Y, which involves doing X. They might not even know it does, but it does, and they did after all hire you because you're an expert on that that subject, as stated on your application. Are you then going to knowingly make an algorithm worse than your patented one to avoid license issues?
It's worse than that. If the company you apply for a job at has any interest in the patents, chances are that they will not offer you a job.
The problem is that you selling/licensing patents to them while an employee will easily be seen as a conflict of interest.
If they want you and the patents, I believe they may require you to sign over any and all IP to them as terms of employment, compensated by a signing bonus.
I've not got any patents, but at one point I was handed an employment contract that demanded I grant a licence to all my past and future work (which I refused to sign), so you could very well be right. (I'm in the UK, although the company in question was headofficed in Canada)
http://blog.nexusuk.org
If you mentioned your patents on your resume before the long and tedious process of patenting is finished, your patents are already invalid anyway.
Advice columnists will always tell the writer who wants to know if she should encourage her boyfriend to leave his wife: if he will cheat on her, what makes you think he won't cheat on you? He's already proven to be a cheater.
I would not want to hire someone willing to sell out the IP of their last employer. How can I trust this person with my IP?
If Slashdot were chemistry it would look like this:Cadaverine
Not true. Any noun can be verbed.
I have 3 patents to my name.
While I list them on my resume as part of my accomplishments, I have never offered them, for free, or for a licensing fee, to a prospective employer. In my opinion, their value is in showing your employer that you have skills, not as some 'package deal' where one buys you, and gets the tech for free.
If you mention that you used to be a successful musician, would they expect you to perform for free at the company picnic?
Confucius say, "Find worm in apple - bad. Find half a worm - worse."
You can surely disagree with an opinion, but the fact that you requested that people censor an opinion is disturbing. I did not read your post after seeing that statement, and sincerely hope you are moderated negatively.
The purpose of the Slashdot moderation system is to encourage and reward "good" dialogue, not to censor opinions you don't like.
-The wise argue that there are few absolutes, the fool argues that there are no probabilities.
I've been in EXACTLY that situation.
The solution is to make the license explicit and separate from the employment agreement.
This avoids situations where the IP license does (or does not!) expire when you leave the company.
Is it a paid-up-once license, valid forever, or renewable on a yearly (or even monthly) basis?
Does the license include the right to relicense (i.e. can the company sell a license to produce stuff based on your IP to third parties to manufacture and sell)
Does the license follow the company, if the company is bought out by $MEGACORP?
Yes, we had lawyers on it. Yes, everyone agreed that this was the way to go.
Seriously, numbers.
I ask because a large number of patents are, well, junk and will be thrown out at the first legal challenge. If you have one of those, quit worrying about it. You don't actually have anything of value. I used to deal with a fair number of people who were working full time somewhere and trying the software-based startup route. Having a patent on something obvious was common. I didn't really expect any of them to survive a legal challenge.
Plain and simple: Patents are assets. Put them into a company. A company that you own 51% in at minimum of course.
Make it clear to any potential employer, that in terms of patents it's ... out of your hands to give your prospective emloyer access to IP owned by [YOUR_PATENT_HOLDING_COMPANY] ... whenever they're negotiating about your patents they're talking to you not as an employee but as CEO/Owner of [YOUR_PATENT_HOLDING_COMPANY]
a)
and
b)
This not just keeps the fronts clear but also opens you up to potentially lucrative deals with you and possible employers.
Hope I could help.
We suffer more in our imagination than in reality. - Seneca
The obvious problem with that is that your past work may very well be someone else's property.
You may simply have no standing to grant a license to your past work.
A Pirate and a Puritan look the same on a balance sheet.
Verbing wierds language.
Never underestimate the power of stupid people in large groups.
But while you are working there you should always bring your best. That is how a person gets through life being successful and remaining human.
Why is it so hard to only have politicians for a few years, then have them go away?
I would never hire an employee who also owned IP relevant to my industry. This sounds like a nightmare employee with a mixed agenda.
Plenty of research students end up with a patent or two as a result of their research.
I think a key difference is who actually owns the prior patents. If the university or a prior employer own the patent then there is no issue; even though the patent bears his name, it really isn't his. On the other hand, if he is the sole (and actual) owner of the patent, then I agree, there are potential nightmares ahead.
I wonder if there might be some way to legally separate himself from the patents, much like politicians have to do with their retirement investments. Place them in (assign them to) some sort of hands-off managed trust, which would handle any potential licencing without input from him. Essentially, his resume would read like he was involved with a patent at a prior employer. The only odd point would be when he gets requested to figure out a work-around to his own patent, in order for his employer to avoid licencing.
McFly777
- - -
"What do people mean when they say the computer went down on them?" -Marilyn Pittman
It's worse than that. If the company you apply for a job at has any interest in the patents, chances are that they will not offer you a job.
The problem is that you selling/licensing patents to them while an employee will easily be seen as a conflict of interest.
If they want you and the patents, I believe they may require you to sign over any and all IP to them as terms of employment, compensated by a signing bonus.
Or better, they will offer you a job then fire you a year later, and claim your patents are now owned by a company. As long as your patent is well documented you will win, but the company will try to bury you in litigation.
I'm a good cook. I'm a fantastic eater. - Steven Brust
It's worse than that. If the company you apply for a job at has any interest in the patents, chances are that they will not offer you a job.
The problem is that you selling/licensing patents to them while an employee will easily be seen as a conflict of interest.
If they want you and the patents, I believe they may require you to sign over any and all IP to them as terms of employment, compensated by a signing bonus.
I've not got any patents, but at one point I was handed an employment contract that demanded I grant a licence to all my past and future work (which I refused to sign), so you could very well be right. (I'm in the UK, although the company in question was headofficed in Canada)
I ran into this situation. A company I worked for got bought out by a big company who's non-compete said that any work I did on my own time also was owned by the company. I believe I wrote down NO, and FUCK YOU on the sheet and handed it to my boss.
Fortunately I and most of my coworkers were valuable enough and they drafted a new agreement for us that did not include this clause.
I'm a good cook. I'm a fantastic eater. - Steven Brust
In short, you're saying that you simply won't hire somebody with demonstrated ability in a field, and would prefer to take your chances on somebody who might or might not be good? Get the legal department, or your lawyer, to advise you on the patent issues.
"When you have eliminated the unacceptable, whatever is left, however improbable, must be the truthiness" - Holmes
Honestly, I think you're crossing a line that's probably best not crossed. Becoming an employee of a company, and licensing your own IP to that same company (whether or not it was premeditated), is creating a conflict of interest. Rather than going the employee route, you should market yourself as a consultant, charge whatever fees are necessary for implementation and the associated licenses/royalties, and then move on. This doesn't offer you any long-term employment benefits, but it completely avoids the potential conflict of interest you're talking about, which if not handled extremely carefully, could haunt you for a long time to come (in the form of legal disputes over pay surrounding your IP).
My 2 cents.
Also, IANAL.
Don Head
UNIX/Linux Administrator
As an employee your job is to do your best. Period. They hire you at a wage you both agree on. Then. You do your best as an employee for the company. If you have "tools" that you can use and do not then you are not doing the right thing. [..]
But while you are working there you should always bring your best. That is how a person gets through life being successful and remaining human.
There's a not-so-fine line between "don't be a jobsworth dick" and "be an obsequious know-your-place milksop", and this is way, *way* into the latter territory. What makes this paean to fawning obedience in the face of one-sided corporate entitlement so insufferable is the lecturing, self-righteous tone presenting it as a life lesson rather than the corporate propaganda that it is... "That is how a person gets through life being successful and remaining human."
Uurrrgh.
"As an employee your job is to do"... whatever you agreed to do in your contract or job description. The "don't be a jobsworth dick" part is (say) when your colleagues need help with some quick but important task five minutes after you nominally finished and you don't say "I finished five minutes ago" when you're not in a hurry.
That "is how a person gets through life being successful and remaining human." This doesn't mean that (say) someone contracted- and paid for- 20 hours a week should be expected to work 35. (*) They don't get 15 hours of your free time that they didn't pay for. So why would they get free use of the IP that you presumably spent a lot of your own time developing before you worked for them (assuming you hadn't agreed to that in your contract)?
You'd expect them to be as fawningly grateful to you as you're supposed to be to them? Really?!
This is not to say that they should get free permanent lic of all your "IP" (Fuck I hate that phrase) becaue you had the pleasure to work there.
Well, now *that's* interesting. Because though IANAL, even I can guess that if your IP was genuinely *that* valuable (**), then using it in your work without explicitly agreeing the terms with your employer would potentially be a very risky idea.
For example, what happens if you build a system whose maintenance relies on continued use of that IP after you leave? Are they forced to abandon the system that you built for them as part of your job? Since you could (or should) have known about this in advance, your voluntary use of this IP could possibly- if not probably- be construed as some form of implicit offer and/or agreement. What if they then want to sell that system commercially? What if they *only* want to sell it commercially because it lets them use- and build upon- your IP on the same terms as a work for hire?
And that's if they're operating in "good (legal) faith". They could quite easily fudge the issue of where some or all of the work was created if (say) you didn't have clear evidence that you invented it on your own time. Do you fancy fighting that in court?
I'm not saying I have the answers to these questions. I'm saying that *you* must have, however, since you were the one implying there was a moral obligation on people to use their IP "tools" for their employer's benefit.
As I said, this isn't about being a jobsworth, but it sounds like you drank the Kool Aid (or are the one that's preparing the Kool Aid for others to drink) and started to believe this utterly sycophantic, corporate arselicking bastardisation of a once-legitimate point.
(*) Yes, we all know that some employers *will* try to get away with getting as much unpaid work from employees as possible. That doesn't make it morally justifiable.
(**) And not just some glorified ten-a-penny web script you slapped together in your spare time that no-one is likely to give a damn about
"Slashdot - News and Chat Sites Deviant". (Click "homepage" link above for details).
For example, what happens if you build a system whose maintenance relies on continued use of that IP after you leave? Are they forced to abandon the system that you built for them as part of your job? Since you could (or should) have known about this in advance, your voluntary use of this IP could possibly- if not probably- be construed as some form of implicit offer and/or agreement. What if they then want to sell that system commercially? What if they *only* want to sell it commercially because it lets them use- and build upon- your IP on the same terms as a work for hire?
You sue them for not having a license!
That seems to be how things work in the big industry world..
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Your observation would be insightful if holding a software patent demosntrated ability in the field.
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Absolutely. If your patents are potentially valuable, you need an attorney's advice on how to handle this, not a bunch of opinionated /.ers without experience in what you're trying to do. Trust any opinion here (including mine) as worth exactly what you paid for it...but, if it sounds reasonable to you, do what you think best.
You sue them for not having a license!
I'm sure that their legal team will argue the point that you implicitly granted them license to use the IP when you voluntarily included it in work (for hire) you created for them. And having established that principle, will seek to argue that it covers any derivative of that work. However, both these points are essentially restatements of what I'd already said above.
"Slashdot - News and Chat Sites Deviant". (Click "homepage" link above for details).
The obvious problem with that is that your past work may very well be someone else's property.
You may simply have no standing to grant a license to your past work.
Yes, one of the reasons I cited for refusing to sign it is that a lot of my past work is stuff like Linux kernel coding (which automatically inherits the GPL) - I can't give anyone a non-GPL licence to this work, which is what they were demanding.
But aside from that - if someone wants a licence to all the work I do over the entire course of my life outside of my employment with them, they can damned well pay me a salary for my entire life too! As far as I'm concerned, an employer is entitled to any work I do during my contracted working hours (usually 37.5 hours a week - 09:00 - 17:30, excluding lunch hour); if they want to claim ownership on anything I do in the other 130.5 hours a week then they are going to need to pay me 3.5 times as much for the same hourly rate.
FWIW, this was during a contract renegotiation after my department had been sold off - in theory the new owner needed to comply with TUPE legislation but they had issued a "sign the new contract or be fired" order (which is illegal). However, when I refused to sign, they did reword the contract to remove that clause, so I guess they were trying to do *something* to avoid getting sued.
http://blog.nexusuk.org
Verbing wierds language.
True, that. "wierds" is indeed a very weird word.
Are you a grammar Nazi? I'm trying to improve my English; please correct my errors!
I can't give anyone a non-GPL licence to this work, which is what they were demanding.
IANAL, but are you sure this is the case? I believe that in my country (Norway) at least, you're still the sole proprietor of your IP. You can sign an exclusivity contract, which of course puts restrictions on what you can do with your IP, but it can't put any liability on you for rights you've granted in the past (although an already contracted exclusivity can be transferred). Did they want to gain exclusive rights to code you'd already published under the GPL?
Under our laws, (again I believe that) that would make no sense. If there was a mechanism by which the license for a piece of code could be retroactively retracted most O project would have had huge problems. A license is different from a contract, and a license can't preclude other uses in the manner that a contract can. Even ignoring that, however, you would still be able to apply as many licenses a you want to your code. Does the GPL preclude that you grant, for instance, a BSD or Apache license for code which you wrote yourself?
Naturally I otherwise agree with your post :)
Are you a grammar Nazi? I'm trying to improve my English; please correct my errors!
I can't give anyone a non-GPL licence to this work, which is what they were demanding.
IANAL, but are you sure this is the case? I believe that in my country (Norway) at least, you're still the sole proprietor of your IP.
I am the owner of any code I sumbit to the Linux kernel, *but* it is also considered a "derived work" of the rest of the kernel (which means, legally, I'm not the *sole* owner) and therefore the GPL applies.
Did they want to gain exclusive rights to code you'd already published under the GPL?
The contract was non-specific on what code they were talking about - it was a blanket "you will give us a perpetual nonexclusive licence to do what we want with any IP in your ownership which you produced before, after or during your employment with us" (or words to that effect - I can't recall the exact wording).
I don't know how legal it was - as I mentioned, the company in question was already ignoring their TUPE obligations. However, legal or not, I saw no merit in signing it, so I didn't.
Does the GPL preclude that you grant, for instance, a BSD or Apache license for code which you wrote yourself?
The GPL doesn't prevent dual-licensing code for which you are the sole owner (i.e. you wrote it, or the copyright was assinged to you; and it is not derived from anyone else's code). This even extends to commercial licences - i.e. I can write some code and release it under GPL, at the same time as selling a paid-for licence with non-GPL terms to a few people. However, when you contribute code to an existing project, it is usually considered to be a "derived work" since it almost always makes use of existing parts of that project's code - therefore the writer of contributed code would seldom be considered the sole owner, so whatever licence it is released under would need to be fully compatible with the licence used on the rest of the project. This generally precludes dual-licencing code that has been contributed to a GPLed project.
Much like other copyrighted stuff like music - if you make a song that is derived directly from someone else's song then you can't just blindly release it yourself - generally to release a derived song you need to get a licence to do so from the owner of the original song.
http://blog.nexusuk.org
That makes it clearer for me. Thanks for taking the time :)
Are you a grammar Nazi? I'm trying to improve my English; please correct my errors!