Unsure about Patent terms with current employer before and after quitting.

[Ghreen]

What is the name of your state? CA

Hello All

Here is my situation. I am an Industrial Designer for a very small company and it is time for me to move on but there are 2 provisional utility patents (A & B) to which I am 1 of the 3 inventors that is in the works. Actually I feel comfortable claiming about 90 percent responsibility for both because the other 2 inventors is my boss and the marketing VP. Their level of involvement was rather broad in that they initiated the idea and approved my concepts and directions. A patent attorney is working with us to examine the merit of our invention.

Provisional patent (A) is not completely filed but that product is out in the market for approx. 6 months now and doing very well in the states and internationally. It was hastily developed without extensive research of existing patents. However prior to that there was light research but there weren't distinct identical claims. There are a few notable features that are probably patentable.

Provisional patent (B) is near finished (I completed the form and provided diagrams). This product is starting to appear in a few retail chains in the US and is expected to do better than the product of provisional patent (A). This was also hastily developed but without any research in existing patents. Our patent attorney have recently found a broad existing patent from a larger corporation that we are likely infringing, (much to my surprise). However there are one or two small functional elements I developed that we can possibly claim to differentiate ourselves if litigation was brought to us. This issue is still pending.

My Questions are:
1.I understand that upon my employment it was agreed in contract that my research, designs, concepts, and art work belongs to them but does this hold true for inventions?

2.If inventions are exempt from employer ownership do they need to settle or buy those ideas from me too take full ownership of the patents before I leave? If so who sets the terms?

3.If I don't have any rights to my invention do they have the right to exclude me once I leave?

4.If they don't exclude or buy that patent from me am I entitled to any type of compensation such as royalties? If so who sets the terms?

I am quite concerned with my situation because I am leaving in a month. When the patent attorney is finished examining our claims I would have moved on by then and I am not aware of my rights then. Please help.

Many Thanks in advance for any advice,
Ghreen

 

[divgradcurl]

1.I understand that upon my employment it was agreed in contract that my research, designs, concepts, and art work belongs to them but does this hold true for inventions?

Yes. In fact, even without a written contract or agreement, anything you invented while working within the scope of your employment almost certainly belongs to your employer.

2.If inventions are exempt from employer ownership do they need to settle or buy those ideas from me too take full ownership of the patents before I leave? If so who sets the terms?

They are not exempt -- see above.

3.If I don't have any rights to my invention do they have the right to exclude me once I leave?

I'm not sure what you mean here. You are an inventor, so you will be named as an inventor -- but the patent will be assigned to your employer, and you will have no rights to the patent.

4.If they don't exclude or buy that patent from me am I entitled to any type of compensation such as royalties? If so who sets the terms?

No. The patent belongs to your employer.

A patent is really no different from anything else you create or develop while working for someone else. If you design a widget while working as an engineer for a company, the company owns the design, not you, and you are not entitled to any payment or compensation over and above you regular wages. The same holds true for a patent -- you will be named as an inventor on the patent, because a patent, to be valid, must correctly name all of the inventors -- but the rights to the patent, and ownership of the patent, will be assigned to and owned by your employer.

Now, if you have a written contract that says something different, then things will be different.

 

[Ghreen]

Thanks for clarifying things divgradcurl. I kinda figured that my employer owned the patent. However isn't true that a Provisional Patent cannot change once it is completed? I am under the impression from the USPTO website that when you decide to file for the actual Patent within that year you cannot make adjustments on the PPA. If all of our signatures are on the Provisional then what does it mean for me when I am no longer with the company? Do they have the authority to exclude my name once I leave? This was what I was referring to on question 3.

If not then technically don't I have a stake in those patent? Hypothetically speaking if someone ever infringes on any of the two patents and there were some damages awarded to us, am I entitled to anything?

Thanks

 

[divgradcurl]

However isn't true that a Provisional Patent cannot change once it is completed?

Yes and no. A provisional patent CAN change before it is turned into a nonprovisional, but then you lose the earlier filing date as your priority date. So yesd they can change, but they usually don't.

I am under the impression from the USPTO website that when you decide to file for the actual Patent within that year you cannot make adjustments on the PPA. If all of our signatures are on the Provisional then what does it mean for me when I am no longer with the company? Do they have the authority to exclude my name once I leave? This was what I was referring to on question 3.

You will remain named as an inventor. They won't change it -- if the wrong inventors are named on the patent, then the patent could be rendered invalid and unenforceable. Goig forward, if you refuse to cooperate with the ongoing prosecution of the patent, they can petition the USPTO to act in your behalf. But your name will remain on the patent as an inventor.

If not then technically don't I have a stake in those patent? Hypothetically speaking if someone ever infringes on any of the two patents and there were some damages awarded to us, am I entitled to anything?

Don't confuse inventorship with ownership. Yes, you will remain an inventor, and will always be listed as an inventor -- but your company owns the patent, not you. It's like making a painting and then selling it -- you will alwats remain the artist, but someone else owns the painting. And, since you are not an owner, you are not entitled to sue for infringement, nor are you entitled to any money recevied either from an infringement suit or from licensing or resale of the patent.

 

[Ghreen]

Thanks for clearing that up. Makes quite a bit of sense. Least I'll have that piece of mind when I move on.