Am i in danger of loosing my invention?

[aotoole]

What is the name of your state? NJ

I am the primary inventor of a communications system. The company that I had worked for at the time applied for the patent on my behalf. After I had left the company and on the last day possible for application they emailed me and asked me to assign the patent to them. I wanted to negotiate a settlement and did not sign.

They petitioned and claimed that I had refused to sign...which is not true, I want to negotiate the terms of the assignment (namely $$).

The patent office declined their petition, claiming that they did not prove that i had refused to sign.

I believe that the application period has expired.

So where does this stand? Can they reapply for the patent without my name on it? Is that legal?

BTW- I never signed an IP agreement with them and one of the company officers is listed as a co-inventor

Thanks in advance for your feedback.

 

[divgradcurl]

I am the primary inventor of a communications system. The company that I had worked for at the time applied for the patent on my behalf. After I had left the company and on the last day possible for application they emailed me and asked me to assign the patent to them. I wanted to negotiate a settlement and did not sign.

Even without an agreement to assign your rights to the company, you probably don't have much of a leg to stand on when it comes to trying to "negotiate a settlement." The patent office doesn't recognize "primary inventors" -- you are either an inventor, or you are not -- and anyone who is an inventor is entitled to use and ownership of the whole invention. It's not like if you invented 80%, you have any more rights to the invention than someone who only invented 20%, or even 1%. All co-inventors are equal contributors for the purposes of patent law in this context.

They petitioned and claimed that I had refused to sign...which is not true, I want to negotiate the terms of the assignment (namely $$).

Come on -- if they asked you to sign, and you didn't, how is that not refusing to sign?

The patent office declined their petition, claiming that they did not prove that i had refused to sign.

Interesting. There are rules with how to get around the refusal of an inventor to sign, maybe they didn't follow them correctly.

I believe that the application period has expired.

What "application period?" The rules require you to file within 1 year of public disclosure of the invention -- but once you've filed, as long as the application hasn't yet gone abandoned, then they can continue the prosecution of the patent potentially forever, although that wouldn't be much use if you let 20 years go by, becuase then the patent would expire before it was allowed...

So where does this stand? Can they reapply for the patent without my name on it? Is that legal?

If the application hasn't gone abandoned (or has gone abandoned, but there is a way they can revive it) then they can try again to get the application accepted by the USPTO without your signatures. There are ways of getting around an inventor who refueses to sign, they just have to follow the proper procedures.

They cannot refile the application without you named as an inventor, at least not legally. Correct inventorship is a big deal, and incorrect inventorship is potentially grounds for finding a patent invalid later, if litigation should ever crop up. So you definitely don't want to mess with inventorship.

So let me ask you this -- why do you feel you are entitled to a "settlement?" The general rule in the U.S. is that pretty much anything you do on your empoyer's time belongs to the employer -- what makes your contribution special, such that your employer shouldn't own it?

 

[aotoole]

Thanks for your quick response and the information you provided.

Here are some answers to your questions:

Come on -- if they asked you to sign, and you didn't, how is that not refusing to sign?

I felt that the ammount of time that they gave me to sign was not suffcient. They gave the application to me to sign 1 day before it was due. They also did not provide all of the final drawings associated with the patent.

So let me ask you this -- why do you feel you are entitled to a "settlement?"

The assignment that they asked me to sign stated that I assign the patent to the company for the sum of one dollar. So they assigned a dollar ammount to assignment. I felt that my contribution was worth more than that.

The general rule in the U.S. is that pretty much anything you do on your empoyer's time belongs to the employer -- what makes your contribution special, such that your employer shouldn't own it?

Is that a rule or a "general rule"? if it is a rule, then what is the point of getting employees to sign IP agreements as part of the new hire process?

There are rules around getting around an inventor's refusal to sign.

If so then what are my rights as an inventor?

What would be the implications of signing the application but not assigning the rights of the invention to them?

thanks for your help.

 

[divgradcurl]

I felt that the ammount of time that they gave me to sign was not suffcient. They gave the application to me to sign 1 day before it was due. They also did not provide all of the final drawings associated with the patent.

Well, the final drawings things is no big deal -- applications are routinely filed with "informal" drawings. As far as the not enough time to read before you sign, well, I guess what would have been a sufficient amount of time? Did you let them know how long you needed?

The assignment that they asked me to sign stated that I assign the patent to the company for the sum of one dollar. So they assigned a dollar ammount to assignment. I felt that my contribution was worth more than that.

The "$1" thing is strictly a formality -- the fact is, you were paid to invent as an employee of the company, so you've already been paid for the invention. The company is under no obligation to reward you further.

Is that a rule or a "general rule"? if it is a rule, then what is the point of getting employees to sign IP agreements as part of the new hire process?

It's a "general" rule -- every rule has some exceptions, although in this case, the exceptions are few and far between, and generally are related to inventions that are arguably created on company time, and are not related to any of the company's core competancies.

And the reasons companies have you sign the IP agreement is exactly for situations like this -- to avoid anyone having any question as to who owns what.

If so then what are my rights as an inventor?

You have a right (and they have an obligation) to be named as an inventor. As I mentioned above, you did the work on company time, so your employer owns the invention -- you don't really have any rights to it.

What would be the implications of signing the application but not assigning the rights of the invention to them?

They could ask a judge to "quiet title" and force you to assign the patent to them.

Based on the information you've given, it really doesn't sound like you have any reasonable reason to refuse to sign the disclosure. You invented the invention on company time while an employee of the company, so it's clear that you don't own the invention. It's like writing a technical manual at work -- sure, you wrote it, but you were paid to write it, by the company, and that's why the company gets the copyright and not you. It's the same thing for patents, with the exception that U.S. patent law does not recognize a company as an inventor, so the patent rights originally vest in the inventors and then are assigned to the company -- it's an extra step with patents, but the end result is the same.

Now, if there are other fatcs here that are not obvious from what you've written, that could potentially change things. And certainly, you could always consult with a local attorney to see if you have any rights that have been stepped on by the company. But given what you've written, you really have no right to refuse to sign the dusclosure, and no right to the underlying invention.