Registering Patents with Former Employee

[kitty25]

What is the name of your state (only U.S. law)? Iowa

I separated from my previous employer almost a year ago and had a separation agreement. From my understanding, a document I signed at employment stated that any patents would essentially be forfeited if leaving the company since they are owned by the company. I got a package in the mail to sign a patent as an inventor for this employer, but since my departure was not a happy one for me (not fired just displaced for no fault of my own), I am tempted to just send the documents back without signing. I don't see anything on my separation agreement regarding signing this stuff. Since I have to get it notarized and everything, I have no interest helping them at this point. Any advice?

 

[CenTex71]

What is the name of your state (only U.S. law)? Iowa

I separated from my previous employer almost a year ago and had a separation agreement. From my understanding, a document I signed at employment stated that any patents would essentially be forfeited if leaving the company since they are owned by the company. I got a package in the mail to sign a patent as an inventor for this employer, but since my departure was not a happy one for me (not fired just displaced for no fault of my own), I am tempted to just send the documents back without signing. I don't see anything on my separation agreement regarding signing this stuff. Since I have to get it notarized and everything, I have no interest helping them at this point. Any advice?

Your former employer has options. They can document your refusal to sign and proceed with filing the patent. If they're smart that's how they'll do it, but they may browbeat you with your employment agreement first.

 

[OHRoadwarrior]

If I were them, I would beat you into bankruptcy, with their lawyers until you beg to sign.

 

[PaulMass]

You're not an employee. You are under no obligation to assist them.

 

[CenTex71]

If I were them, I would beat you into bankruptcy, with their lawyers until you beg to sign.

On what grounds? They can still file the patent.

 

[quincy]

What is the name of your state (only U.S. law)? Iowa

I separated from my previous employer almost a year ago and had a separation agreement. From my understanding, a document I signed at employment stated that any patents would essentially be forfeited if leaving the company since they are owned by the company. I got a package in the mail to sign a patent as an inventor for this employer, but since my departure was not a happy one for me (not fired just displaced for no fault of my own), I am tempted to just send the documents back without signing. I don't see anything on my separation agreement regarding signing this stuff. Since I have to get it notarized and everything, I have no interest helping them at this point. Any advice?

If you were employed for your inventing skills or to create an invention or an invention was created by you during your employ, the employer would own the rights to the inventions created, with or without a written agreement and with or without your signature (although written agreements are always nice to have in case a dispute arises).

The US Supreme Court stated: "One employed to make an invention, who succeeds, during his term of service, in accomplishing that task, is bound to assign to his employer any patent obtained."

Since 2012, with the American Invents Act, the owner of the patent rights can apply for a patent on an invention, even if the owner is not the inventor. That said, it could potentially help you in future assignments if you assist in having your name listed as the true inventor on the patent application, even if you are not the owner of the rights in the patent.

 

[LdiJ]

If you were employed for your inventing skills or to create an invention or an invention was created by you during your employ, the employer would own the rights to the inventions created, with or without a written agreement and with or without your signature (although written agreements are always nice to have in case a dispute arises).

The US Supreme Court stated: "One employed to make an invention, who succeeds, during his term of service, in accomplishing that task, is bound to assign to his employer any patent obtained."

Since 2012, with the American Invents Act, the owner of the patent rights can apply for a patent on an invention, even if the owner is not the inventor. That said, it could potentially help you in future assignments if your name is listed as the true inventor on the patent application, even if you are not the owner of the rights in the patent.

Quincy makes a very good point. While I can understand your desire not to help them, it seems to me that by being listed as the inventor you could be helping yourself as well.

 

[quincy]

Here are two links to the Leahy-Smith America Invents Act:

From Bitlaw, Section 4 of the Act (please make note of Inventor's Oath or Declaration §115 (d)2(B)):
http://www.bitlaw.com/source/America-Invents-Act/4.html

Full text of the Act from the USPTO: http://www.uspto.gov/aia_implementation/20110916-pub-l112-29.pdf




(to clarify, and I made this slight correction in my previous post - kitty25 will be listed as inventor but it can be to his/her benefit to assist the former employer with the patent application by signing the declaration as requested)