Can I Be Fired For Refusing To File a Patent? 617
An anonymous reader writes "I am a developer for a medium-sized private technology company getting ready for an IPO. My manager woke up one morning and decided to patent some stuff I did recently. The problem is, I'm strongly opposed to software patents, believing that they are stifling innovation and dragging the technology industry down (see all the frivolous lawsuits reported here on Slashdot!). Now, my concern is: what kind of consequences could I bring on myself for refusing to support the patent process? Has anybody been in a similar position and what was the outcome?"
Up to you but just remember... (Score:1, Informative)
Firing (Score:4, Informative)
IANAL, but I'm pretty sure there's only a small set of things you can't be fired for in the US, like race, and anything else is legal. There's probably no law protecting your right not to file patents.
This one's a thinker... (Score:2, Informative)
You also need to look at any sort of contract/agreement that you'd signed pursuant to your employment; essentially, if such an agreement says that the company owns any work you do for them, which one would assume they would insert such a clause to prevent you jumping ship and taking your work elsewhere, then it's no longer your right to refuse to fill out any patent forms for the work, no matter how distasteful you might find them. And ultimately, they would likely end up going ahead and doing it anyway regardless of what they end up doing to you; and if they get rid of you in that sort of situation, the outlook is much more bleak for you should you try and pursue any legal action over your termination.
Patents are not automatically enforced. Patent it. (Score:5, Informative)
If you are against software patents, the best thing you can do is get your own patents in the current state of things. Then you can choose to not enforce them, while having strong grounds to prevent anyone else from patenting it and suing you despite your work being prior art. (It can and does happen.)
Re:Easy fix (Score:5, Informative)
Make an anonymous posting somewhere, describing the innovation you came up with. If it has been disseminated before, it cannot be patented.
The problem with doing that is if the invention is not obvious and has paved the way for considerable financial gain then the company can probably trace it back to you through court orders for information; regardless of how anonymous you thought you were at the time.
It _IS_ a breach of your contract to release trade secrets outside of the company you work for. It's a pretty much standard clause in every employment contract. If it is traced back to you there could be loss of job, litigation, and possibly criminal charges depending on the severity that your company puts on the matter.
Re:Better approach (Score:4, Informative)
http://www.itconsult.co.uk/stamper.htm [itconsult.co.uk]
Re:Well... (Score:5, Informative)
Notice how Microsoft patents, for example, are owned by Microsoft Corporation, not by the individual coders who came up with whatever algorithm/mechanism/whatever the company is trying to patent.
Therefore, I *think* that your boss is just requesting your help filing and managing whatever the software does (assuming he is not a techie and can't write out the algorithm/flow charts himself). If you refuse to help him, he could still get a patent, and probably fire you, too...
HOWEVER! I am not a lawyer, and this sounds like something that should be verified by one. I would recommend talking to a patent attorney as well.
Hope that helps!
Re:Easy fix (Score:1, Informative)
Make an anonymous posting somewhere, describing the innovation you came up with. If it has been disseminated before, it cannot be patented.
Not at all. In the USA (where I assume the writer is from), you have a one-year grace period from the time of first public disclosure to file a patent. Other countries have different laws.
Re:Obligation to Company (Score:4, Informative)
That's totally wrong analogy. Let's take my favorite subject, me, for example.
To do development and participate in other functions around development, like patenting stuff, is what I am paid for. I signed a contract that says so, so I must obey it or I get my ass fired and beaten in the court.
Now allthough my contract says that I'm supposed to do "other duties assigned by the employer" those "other duties" must relate to my actual work function somehow. Cleaning toilets is totally out of the question but like changing ink cartridges to the printer could be considered as "other duties".
Re:Why? (Score:4, Informative)
Re:Obligation to Company (Score:3, Informative)
"So, couldn't he just put up the ideas online before his boss tries to patent them? "
Yes it could. It would invalidate the patent. If the company however found out they had done it they would be liable for damages as well as facing jail time.
If they were to patent it before the company they worked for did, then they can face fines and jail time as well as invalidate the patent they submitted.
There was also a case in the UK where an employee tried to create an idea they had while employed (explained the idea but the company declined). The judge ruled that the previous company not only owned the rights to the idea but all the work done after they had left.
I said I didn't want my name on it.... (Score:1, Informative)
I had a similar problem with a specialized data-replication trick I came up with. I noticed that the eventual data consumer could handle duplicates, so the replication could be simplified to an "at least once" guarantee.
I said that he could file a patent, but that I would find it professionally embarrassing to be named in such a patent.
Then he asked me to describe it so that someone else could file the patent and I explained in terms of undergraduate textbooks on transaction processing and replay logs with idempotent transactions. The invention was reduced to noticing that this bog-standard technique was applicable to our application, at which point he gave up.
Re:Better approach (Score:3, Informative)
Almost no companies anymore give a referal beyond "Yes, he worked here from date x to date y as an (engineer/manager/whatever)". They're advised by their lawyers to avoid disparagement or praise of former employees in order to avoid lawsuits from unemployed ex-employees or unsatisified employers.
The inventor owns the patent (Score:2, Informative)
That is 100% wrong. First of all, the Slashdot asker might live in Europe, in which case he has even more rights to stand on. It is not uncommon here for employers stealing their employees inventions, making billions and then getting sued by the inventor for millions. If the invention is invented at work and if the invention is relevant for the work, an invention that improves the manufacturing process would be a prime example, then the company has a right to take ownership of the invention but must pay the inventor reasonable compensation. That is, a few percent of what the invention brings in.
If the invention is not relevant for work, a developer inventing a new blend of coffee for example, then that invention is the sole property of the inventor. The company has no right to it whatsoever even if the invention was made on company time using company resources.
IANAL, but [dww.com] I [findarticles.com] can [chestofbooks.com] Google [findlaw.com].
Re:Not really (Score:3, Informative)
Actually, you aren't quite correct.
A patent isn't a state issue, but rather a federal one. Patents are filed with the U.S. Patent and Trademark Office, so it really is a federal law here where individual state laws really don't apply... at least in terms of patent ownership and such.
Patents are filed in the name of an individual, and are issued to individuals, not corporations. This said, there may be a condition of employment that requires you to license these patents to your employer on an exclusive basis... in essence having your employer "own" the patent.
I will say, however, that this ought to have been a well settled issue by the company he was working for when he was hired. If they are asking for a retroactive contract and forcing the employee to agree to do this well after the company is established and as a condition of continued employment, they may be in a lot more trouble legally speaking. Particularly if this is about professional services which you provided under the assumption that you could keep the legal IP that you generated on your own.
You are correct that state employment law does get into this mess as well, but that would mainly be in regards to what the consequences to the employer would be if they would dismiss an employee who refuses to participate in these sort of patent investigations.
Re:Black and white: yes (Score:3, Informative)
Re:Easy fix (Score:1, Informative)
This is why people should not give (or take) legal advice from online postings by lay persons.
"Make an anonymous posting somewhere, describing the innovation you came up with. If it has been disseminated before, it cannot be patented."
This is plain wrong. When you make your invention public the publication starts a one-year time period wherein one must file a patent application (provisional or utility). Failure to file within one year constitutes a waiver of your patent rights. See 35 U.S.C. 102.
"The problem with doing that is if the invention is not obvious and has paved the way for considerable financial gain then the company can probably trace it back to you through court orders for information; regardless of how anonymous you thought you were at the time."
What?
"It _IS_ a breach of your contract to release trade secrets outside of the company you work for. It's a pretty much standard clause in every employment contract. If it is traced back to you there could be loss of job, litigation, and possibly criminal charges depending on the severity that your company puts on the matter."
Criminal charges you say? I think not. That would constitute a prior restraint. See First Amendment to US Constitution.
Re:Better approach (Score:5, Informative)
You have to do that as part of the patent application process anyway!
Re:Better approach (Score:3, Informative)
If you're a lone gun with no money to pay lawyers, then sure. If you're at a company, as this guy is, and the company is smart, he doesn't do the research, the legal team does.
Now, if the legal team discovers that their company is, in fact, infringing on an existing patent, but they don't tell anyone else within the company, I don't know what happens. (i.e. does the infringement begin to be considered willful?) That's why I would consult a lawyer about matters like this.
Re:Better approach (Score:4, Informative)
Stampers are a nice idea, but use of one may in and of itself be grounds for dismissal under confidentiality agreements that employers commonly require the little guys to sign (transmission of confidential information, including internal communications, to a third party.)
Stampers are only as 'authentic' as a judge believes a third-party to be. There's an ironclad way to maintain confidentiality and to record the time and date of the communication. Send the e-mail, ask for a reply. When you get the reply (or after a few days, if they do not respond), print out the e-mail. Take the printout to a notary public and ask the notary to officially witness that you've been in possession of this document at this time and day.
Re:Prior art approach (Score:5, Informative)
> You have to do that as part of the patent application process anyway!
Actually, no, you don't. You have an obligation (and it continues right up until the patent issues) to disclose any relevant prior art you know of -- or, for that matter any information you know that could affect, in any way, the patent examiners decisions.
But you are under no obligation to go *looking* for that information. That's the examiners job.
Of course I'm not a lawyer, but that's what they tell me when I do file patents. (yes, I'm an evil software patenter -- there goes my karma)
Your lawyer may say something different -- if you are filing a patent, I suggest you listen to him, and not me on this subject :-).
Back to the original subject at hand -- if you do find prior art, it would save the company money by not patenting -- which does cost 10 to 20k per. And whether you send this notice by email or not, you can and should insist on meeting your obligations under law to disclose that prior art to the patent office when and if you file for a patent.
Re:Prior art approach (Score:3, Informative)
I asked a patent lawyer friend of mine about this today, she said while there is no requirement to look for prior art, the court is allowed to hold it against you in a later infringement action.
Re:Better approach (Score:5, Informative)
"Wrongful dismissal case?" If you're fired because of your race, sex, or a few other things, then sure. Otherwise, generally a boss can fire an employee "at will", for reasons like "I don't like you."
I think several posters are forgetting what counts in business - integrity. The right thing for this guy to do is tell his boss his concerns, and perhaps highlight the poor light that the USPTO has lately taken on software patents. If his boss persists, he should either relent and file the patent, or consider a new job. That way, at least he keeps his integrity. Lying to his boss, or purposely undermining the patent would damage his integrity.
Not true in every country (Score:5, Informative)
In some countries (European ones are a good example) governments prefer to protect employees from bosses firing for no reason because otherwise you get inflated unemployment figures. In the UK for example you have to have a reason to fire someone and it has to be fair. Even in the case of redundancies you can't get rid of the people you dislike under a lot of circumstances, you have to be able to justify why you've got rid of them if they've been there longer than other employees, you have to justify why you got rid of them if they perform better than other employees and so on. In other words you can't get rid of them if they're a good employee and you don't have good reason.
You can't even get rid of them by trying to make their life hell and making them want to leave because providing they've had the sense to document and get as much evidence (i.e. copies of e-mails) of all instances where the boss has made your life hell to try and make you leave. An employee who has had his life made difficult more so than other employees and who has evidence may choose to stay or leave the company and go for a constructive dismissal industrial tribunal. Payouts for succesful cases are often large on the order of 10s to 100s of thousands of pounds, this often acts as a good deterrent for bosses not to be particularly malicious assholes to employees. Realistically if you do stay in your job and file an industrial tribunal for this type of thing you'll probably find you have no future at that job anyway, but chances are if someone's boss is screwing them over regularly enough for them to file a tribunal you wouldn't have much to lose in that respect anyway.
I'm not sure however that even if these kind of laws were applicable in the country the poster lived in that not liking the patent system is grounds for avoiding the sack. When I was working in IT support I didn't particularly like users but I'm not sure I'd have got on too well if I'd refused to speak to them.