Patent Assignment

[CA350]

What is the name of your state? CA

I am asked by my ex-employer to sign a patent assignment form. The application was filed while I was there. Since I left the company in a very unpleasant way and also the transfer will cover all "continuations thereof" as well, can I decline to sign it? If I sign it, will I be prevented from patenting an improved process as a defensive strategy? I signed hiring agreement and general release agreement anyway, do they really need my signature to file the patent? Really appreciate any answers.

 

[divgradcurl]

I am asked by my ex-employer to sign a patent assignment form. The application was filed while I was there. Since I left the company in a very unpleasant way and also the transfer will cover all "continuations thereof" as well, can I decline to sign it?

Well, you could decline to sign it -- but the fact of the matter is, the invention is owned by the company, and the company has recourse if you do fail to sign. Unless you want to end up in court, sign it.

If I sign it, will I be prevented from patenting an improved process as a defensive strategy?

You would likely be prevented whether you sign it or not -- the invention is not yours -- it belongs to the company.

I signed hiring agreement and general release agreement anyway, do they really need my signature to file the patent?

They don't need your signature to file the patent, but the paper is significantly more complicated if you don't sign -- that's why they want you to sign.