patentcrazy said:
What is the name of your state?newjersey
i am currently patent pending,jointly with my partner. we formed a corporation to develop this product. after the application was filed i developed a new process for the manufacturing of this product. we are currently using this process for our manufacturing. i now want to go out on my own. if i do, can i use the patent, even though i developed it while with the corporation? can i use the new manufacturing process and apply for a patent on it even though i developed it while working for the corporation and the corporation is using it currently to manufacture. i do want to mention that:1) the patent application is not under the company name, 2) i have no written agreements with the company, 3) this is a public corporation.
Well, this sounds complicated enough that you might want to discuss this with a local patent attorney who can review all of the relevant facts in your case and advise you accordingly.
That said, here are a few comments:
1. If you and your partner filed for the patent prior to forming the corporation, and there are no agreements that discuss the transfer of the patent itself or an exclusive license to practice the patent to the corporation, then you probably can still practice the patent even after you leave the corporation. Of course, if the patent has been assigned to the corporation, or there is some agreement to assign the patent or grant the corporation an exclusive license, then you probably can't practice the patent on your own.
Since your partner is also a co-inventor, if there has been no assignment of rights, he can still go on practicing the patent himself.
2. As far as the new idea is concerned, that is a more complicated issue. Generally, anything you create while working for a company that it within the scope of your employment belongs to the company, not you. Here, however, it doesn't sound like you were an employee, but were some sort of owner or officer of the corporation. If you were an employee (even if you were a cofounder, but your status now is employee) then the idea probably belongs to the corporation, and only they have a right to patent the idea (although you would be named as an inventor, of course -- the corporation would just be the assignee) and then use the idea -- so if you left, you couldn't just take the idea with you. Well, I guess you could, but you would likely be sued because the idea almost certainly (in this case) belongs to the corporation.
If you are not an employee, but are instead an officer of the corporation, things get more complicated. The idea might not automatically become the property of the corporation without a contractual agreement in place. However, that doesn't mean you are in the clear -- as a corporate officer, you owe a duty of loyalty to the corporation, and that fiduciary duty may require you to hand over the idea to the corporation.
As I said, this is a complicated scenario, and you are probably best off going to see a local patent lawyer, who can review all of the facts and advise you accordingly.
