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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.
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.
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.
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.
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?
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.
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.
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?
I agree. I had an offer in hand when I got THEIR IP policy. They wanted the ability to claim anything I thought of while in their employ and for two years after as THEIR IP. I listed the projects I was already working on. The offer died in legal after two weeks.
One idea I had been working on showed up in the App Store one month after I discussed it with them. The developer was a former employee of the company.
My idea was unique. It had value. And, someone with more resources was able to capitalize on my idea before I could.
I had no recourse as the system wasn't yet patent pending and the developee no longer worked for the company. I found out via his profile on LinkedIn and he was offshore.
My advise, if you have IP, protect it. If they want you and your patented ideas, make the licensing part of the agreement. You decide what is fair market value
While I don't partucilarly like sw parents, you are entitled to protect what you invent. Don't let anyone tell you otherwise.
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)
I've hired many employees who, either in their spare time or as part of previous employment, had a stable of patents. I hired them often because they had the patents, and as a technology company we never assumed the patents came for free. Incidentally not once did we license those patents.
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.
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.
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.
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
Verbing wierds language.
Never underestimate the power of stupid people in large groups.