What's A Reluctant Inventor To Do? 241
downOnPatents asks: "A company I used to work for has written up a patent application, with me as one of the inventors, and has asked me to review it and sign the necessary legal docs. I haven't seen the application yet, but the idea is broad, and would make many /.'ers cringe. It's not worthwhile trying to get them to change the application or their point of view --- they want as broad a patent as possible to make themselves more desirable to investors and stop competitors. My IP agreement with the company forces me to sign over any inventions, but I'm worried that if I just sign the docs, I'll somehow be endorsing the idea that this is a unique invention and that the company owns all the rights described in the application. What would other folks do if faced with this situation?"
If you are legally obligated... (Score:2)
If you are really opposed to this happening - consider it for the future, and look for work elsewhere. It's not the best solution, but no one is forcing you to work for that company.
What do you believe in? (Score:1)
What I would do... (Score:3)
Get a lawyer. (Score:2)
Seriously. If you care, get a lawyer.
And then, get a good headhunter.
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Sign it. (Score:2)
Its not the people applying for the patents that is the problem, its the Patent office. Besides, you are legally obligated to anyways... unless it is so broad that you believe it not to be you "invention".
Don't do it... (Score:2)
By signing you donot endorse thier overreaching... (Score:2)
If you relly want to make a difference: next time you invent something, get in on the patent application process to make it fair.
IANAL (Score:1)
sign it (Score:2)
sign it and don't think twice about it.
just because they put in a patent application and it gets granted doesn't mean that it won't get refuted by competitors and that there won't be a big legal battle. that's the price that companies that are engaging in these battles have to pay.
sign it (and maybe start looking for smarter companies)
Quit your job. (Score:2)
While this obviously isn't an easy solution, well, if there were an easy solution to the problem...
It's like when people want everything to go their way but don't want to have to do any hard work to get it. "Eternal vigilance is the price of freedom." THAT'S the motto that should be on U.S. coins.
It Depends.... (Score:2)
What would other folks do... (Score:2)
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Reading Comprehension (Score:2)
What's the value of your reputation? (Score:2)
If you believe that your credibility is priceless, then you have a simple solution: don't sign it. If you don't sign it, you may risk being unemployed, but if your credibility is priceless then it's a pretty black and white issue.
If it is more of a grey area (and I would assume it is considering that you posted this), then think about what it is really worth to you. Would you be willing to sacrifice some pay or some options to defend your credibility? How much? If your skills are in demand, then making a stand is easier if you know you've got other options. Furthermore, if your skills are in high enough demand, refusing to sign the patent may not get you fired (although it may make you future in that company much more unpleasant).
Before you decide whether to make a stand you might want to talk to a head hunter or see what's out there on dice or monster board. If you can quickly move to another job with little damage to salary then it might not be worth fretting over.
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ah, good old ethics... (Score:3)
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Do you know any lawyers? (Score:2)
I asked if you know any lawyers because they will confirm what I have just said. Call your cousin, ex-roommate's brother, whomever. This is basic contract stuff.
they pay your bills, you work for them (Score:2)
If you cannot afford to leave, then sign it. They after all pay your bills.
It's a tough question, but... (Score:2)
IF, however, you feel there is any doubt whether you had a direct hand in the invention, or if you doubt that it constitutes a real innovation, get yourself a lawyer. Slashdot is chock full of very very bright people, but only a real live lawyer can tell you how much at stake you put your own ass if you refuse to sign. The other advantage of a lawyer is confidentiality. Someone please correct me if I am wrong, but I believe that to share information about the nature of the patent with a lawyer would not be a violation of any NDA's. In other words, you can actually tell them what the full situation is, rather than a sketchy, vague description such as your NDA's have surely forced you to post here on
Simple Solution (Score:2)
Kintanon
Tell the PTO why its a bad patent (Score:3)
Re:What do you believe in? (Score:2)
Look for prior art (Score:2)
IANL - consult one on this if you care at all about keeping your job, sanity and/or health.
If you can present the lawers with examples of prior art that forces them to limit or rework their claims, they I don't believe they will have a choice in the matter... they will have to do so, or (eventually) face problems defending their patent in court. Doubly damning, I would think, would be that you, the supposed inventor, were the one who informed them of the areas in which their patent was overly broad. If you do this, though, I'd really make sure you had a new job lined up already.
Inventors Duties Generally (Score:5)
First, make sure that you read the Oath or Declaration that accompanies the application. You are going to be asked to sign something under oath, so if you aren't satisfied that it is true -- don't do it. The better you can articulate your reasons, the better you can deal with charges that you are not living up to your end of the patent assignment agreement. The attorney that is sending you the application should want to spend time with you explaining all the duties you have, and all the legal requirements of the application you are reviewing.
Second, remember to send the attorneys all of the prior art you are aware of. You are required to do that, so doing it can't be against your agreement. More prior art can result in narrower claims, but a stronger patent.
Third, if this is a former employer, make sure that you find out how you will be paid for your time. One reasonable approach is to try to get them agree to pay your normal consulting rate for the time you spend on this matter.
Good Luck!
Re:Get a lawyer. (Score:2)
It's very simple .... (Score:2)
The lawyer on the other hand will be trying to push the envelope as much as possible (and pull the wool over the patent office's eyes by citing as little as possible).
Make sure that as many existing patents as possible and previously published articles are cited in the application - well chosen these I bet that you are far more capable at researching your patent than the patent attorney is - if you are especially carefull you can find existing patents that have expired as prior art :-)
Re:sign it (Score:2)
The guy wasn't asking whose fault it is. He was asking about his personal responsibility in the matter. I'd like to note that it has nothing to do with the chances that the patent will be denied/overturned.
sign it and don't think twice about it.
Wonderful. And please ignore that fact that the ink is red and kind of viscous.
Kaa
Off The Top of My Head... (Score:2)
On your own, send a parallel letter to the USPTO. Be sure to cite the patent application number, and declare yourself as one of the named inventors. Explain your situation, and explain why the USPTO should not grant the patent.
However, I echo the sentiments expressed above: Cough up the $500 or so and talk to an intellectual property and/or contract lawyer before you do anything, including what I outlined above.
And, speaking as one tech to another, thank you for having a conscience about this stuff.
Schwab
They can't make you if you don't work there. (Score:2)
This, of course, would not be an easy thing to do and I can't even say I'd quit, but it is something you should consider if you feel as strongly as it seems you might.
Also, I would certainly bring up the discussion of the sillyness of the patent if its truly that bad. Even if they won't change their mind, its important that they at least heard your opinion even if it won't be followed.
Patent fraud. (Score:3)
If they try and fire you for refusing to participate in patent fraud, you'll have a strong case to sue for wrongful termination.
Read the post! (Score:4)
- A company I used to work for has written up a patent application, with me as one of the inventors, and has asked me to review it and sign the necessary legal docs.
Umm... a lot of people seem to say "Quit your job" or "don't sign if you don't mind being fired" or such remarks. This guy evidently NO LONGER works for the company, but he signed a contract requiring him to do this while he worked there.I personally have no advice, as IANAL. I'd personally call my lawyer if I was facing a situation like this.
"Evil beware: I'm armed to the teeth and packing a hampster!"
Re:Does your contract enforce you to ... (Score:2)
Conscientious objectors derive their right not to serve from the fact that conscription is not voluntary, by its nature. Therefore a civil society allows an option.
Re:Attention Deficit Disorder (Score:2)
In that case, my advice is, (nicely) tell them to FOAD (Fuck Off And Die, pronounced "foh-add", not "fohd").
However in the case that you WERE currently working for them, I'd say, FOAD and quit.
Used to work for the Company? (Score:2)
A contract that forces you to sign other legal documents regardless of if you support those other documents. Interesting.
Just sign 'em (Score:2)
The person who wrote this question should consider taking the following stance:
1. Allow the company get the patent so he/she can reap the profits of being paid immediately by his/her company.
2. Let the company fight it out in court and with the public over the validity of the patent.
This can be summed up as 'It's no my problem'. It sounds like apathy, but in this day and age, we need more data points in the patent-wars to bring about change. If his patent is indeed ridiculous, it'll help our movement of changing how patents are awarded. If his patent isn't ridiculous, his company can gain whatever success is inherent in the field they compete in.
Either way, the programmer/patent author will end up realizing actual cash profit from his work. Anyone who advises him to fight this to the death is basically saying 'You shouldn't make money'.
Again, if the patent is ridiculous, the people who have to pay for the legal fees and patent costs are the people who made the boneheaded decision in the first place, not the author.
Find Prior Art (Score:2)
By law, you are required to reveal all known prior art. You can sign the application with as long as it lists prior art.
By doing so, you will have reduced the chances of the patent being approved while at the same time fulfilling your legal obligation to the company. Not the best solution, but you're in a difficult spot.
Re:Attention Deficit Disorder (Score:3)
HEY! Look an airplane!
Get legal advice ... (Score:3)
Are they going to reimburse your legal fees to investigate this? There may be a conflict with your current empolyment contract!
You might well be obligated to sign, but no-one can pressure you to do so without adequate legal advice. It might take you a long time in the library to read up on all this stuff.
patents and patentability (Score:3)
if you worked for them and accepted a salary while the idea was developed, and you did that under an agreement (pre-employment as I do), then you are obligated to sign it. If the patent is written as to be too broad, then it can be challenged in court at a later date.(if say you have an idea that extends this particular work into another area). Things that invalidate a patent include: adding someone to a patent that did not participate (or excluding them),claiming more than the documentary evidence shows was done(ie your engineering notes, or lab notebook should back up the claim). You can write anything into a patent(at filing), but after 1 year you (or in ths case the company) must have the body of work to show when the examiner starts to validate the patent.
BTW, you should also be eligible for some sort of compensation for your signature (in my case 100.00 per patent..oh boy).
Re:Reading Comprehension (Score:2)
sulli
Their lawyers would LOVE a letter from you (Score:3)
If I were you I would tell them that you can't sign the patent application because you don't think that the idea is patentable, and make it clear that if they give you a hard time you will send them a detailed letter stating why it is not patentable. Their lawyers would absolutely hate to have such a letter on record and will probably do a great deal to avoid this. If the need arises, send them a letter stating all the reasons why you don't think the system is patentable. Look for prior art and list all the examples you can find. Also outline why you as a professional in your field feel that the idea is obvious. (Both prior-art and obviousness can be used to invalidate patents.)
I am not a lawyer and I don't even play one on TV, so you should consult a lawyer for some real advice (and don't base your decision on what I say). I've used the people at kcslegal [kcslegal.com] before with great results, and I'm happy to recommend them.
Patent requires an oath (Score:3)
As the question implies, an application for a patent requires the inventor to sign an oath that "he believes himself to be the original and first inventor of the [invention]." See 35 U.S.C. 115. You appear to believe that the patent covers more than original ground.
Now, if you don't believe that the oath is true, but you sign it, you may open up the patent to be completely unenforceable due to "inequitable conduct." While I'm not sure that this idea has been used in precisely your case, it still seems to apply. The trick is, someone that your company is enforcing the patent against has to know that you signed the false oath; how would you answer the question if asked by a lawyer? You may want to point this out to your employer.
Your contract to sign over all IP may or may not require you to sign the oath. Look at it more closely. Of course, unless you want to cause trouble, you may just want to sign the thing...
Signing (Score:2)
So what's the company's problem? If they have a contract from you, why the heck do they need another signature? It sounds more like they want your name on the application. I would just refuse to sign, letting them know that they already own your work in this regard, and that they need nothing more from you.
One proactive thing you could do is urge them to use a free patent. Write up a license that allows everyone to use the patent, void only if the patent holder is does not have equal access to a user's patent. In the latter case simply go through normal channels and sell or swap the rights.
Re:What do you believe in? (Score:2)
Look at what you have to sign (Score:2)
It is all based on wording. If you agree with some of it, and not with others, cross it out, initial, and then sign the modified document. Or, add stuff in, initial, and sign.
Re:Reading Comprehension (Score:2)
Re:If you are legally obligated... (Score:2)
Without reading the exact terms of the agreement, we can't say how much leeway you are permitted. I would tend to think that if the patent is sufficiently broad that you don't consider it to be patentable, talk to a lawyer and you can probably return that signed statement instead of the signatures your former employer wanted. They cannot sue you for NOT lying. (Unless, of course, you signed a nondisclosure agreement to the effect that you would not reveal that they are trying to scam the US Patent office.)
B. Elgin
Please see an attorney. (Score:5)
If you are thinking of not signing the necessary patent documents, please, please see an attorney first. See an attorney even if you are thinking of signing the documents, if you feel you are doing so under pressure.
Also please consider the possibility that you will not have to resign, be fired, or otherwise face major negative employment consequences if, after receiving advice of counsel, you deline to sign. This is because your statement: is actually quite vague. You may believe your employment agreement requires you to sign patent applications. Your employer may tell you that it does. Hell, your employer may honestly believe that it does. None of these things mean that your employment agreement legally does require you to sign the pertinent documents. It may, or it may not. See an attorney.
Finally, you might also want to consider a possibility that will be unpopular on Slashdot -- i.e., that in seeking the broadest possible patent protection your employer does not have any sort of evil, nefarious, or predatory purpose. Your employer's purpose may be entirely defensive. Unfortunately, given the rules of the game right now, many companies believe that they are *forced* to be in a patent arms race in order to protect themselves, even if they don't have any "offensive" intention themselves. In game theory terms, it is a classical Prisoner's Dilemma. Sadly, the best way to ensure that others don't get a particular patent is to get it yourself. Perhaps more importantly, one way to prevent an competitor from getting a related patent is to establish the prior art by getting one yourself. Finally, sometimes the best way to deter a claim for patent infringement is to have ammuntion -- i.e., patents -- with which you can counter-claim.
Re:If you are legally obligated... (Score:2)
Be sure it is accurately stated in any documents you do sign exactly what you DID do and how you got to that point. Good luck.
B. Elgin
That's standard operating procedure (Score:2)
Patent applicants can do prior art research to get an idea of how likely their invention is going to get rejected, but unless the evidence is very clear most people just send in the application - esp. if the former employeer is footing the legal bills to get your name on a patent (a nice addition to any resume). That is to say, most applications are worded very broadly in the first draft anyway, get rejected, then resubmitted with narrower claims, etc. This from a former PTO employee who remembers the instructions, "you have to
In some places you'd be considered lucky... (Score:2)
A former employer of mine applied for a patent for one of my inventions, a month after I left them. I was never contacted about this, and am not mentioned anywhere on the patent, even though I did all of the work. I really don't care either way because I feel that they wasted more resources on the patent than it will ever return in income.
This is besides the point though because in this shop, raises, promotions, and general status were determined by how many patents you had compared to the person in the next cubicle. This quota system created a horrible back-stabbing environment to work in, where a co-worker would rip apart your projects to any non-technical manager, using silly and unfounded arguments, and then claim your work as their own superior idea. This is not the type of environment that fosters innovation.
Since I left this company, their R&D department was toppled and spread to the wind like the tower of babel. Someone within the management structure had determined that their obsession with numerous useless patents did not make good business sense.
-- Len
Patent examiners (Score:4)
If you send a letter to the patent examiner (or better, request an oral hearing - $130) there is a good chance that he will take it into consideration, especially if it's clear that you are not trying to cause harm to your ex-employer and that you are doing this from your conscience and understanding of the underlying art.
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Re:Patent requires an oath (Score:2)
Talk to a lawyer (Score:2)
A. If they didn't need you for the patent, they wouldn't be asking you... therefore they probably _need_ your signature.
B. There's a legal case to be made here. "We have the right to patent any invention you create while under our employ" is legal, assuming they tell you to sign the patent stuff while you still work there. The counter argument would be that if they didn't see your invention as useful enough to patent back when you invented it, that they can't go back and invoke this long after you're gone. Did the contract you signed during employement have any wording along the lines of: "You are required to assist us in obtaining patents on your inventions invented under our employ for X years after termination of employement?"
You can fight this.
Re:What would other folks do... (Score:2)
To be properly named as an inventor (Score:3)
If there are statements in the specification that you believe to be untrue, or the application contains claims that you believe to be unpatentable, bring this to the attention of the patent attorneys. Their incentives should be to submit a document that is factually correct. If you are aware of prior art that potentially invalidates one or more claims, bring that to the attention of the patent attorneys as well (doing so satisfies your duty of disclosure to the PTO -- see 37 C.F.R. 1.56).
If you can't arrive at a document that you believe to be factually correct, and the patent attorneys can't persuade you that there is at least a good faith argument that the full scope of the claims is patentable, then you're on the horns of a dilemma. In effect, you're caught between your obligations under your employment agreement (which frequently contain provisions requiring you to assign any inventions made during employment, and execute any necessary paperwork, even after your employment has ended) and the obligations placed on you by the "jail paragraph" in the oath/declaration accompanying the patent application. Personally, I'd rather face a company trying to get an injunction forcing me to execute a declaration when I think the document is counterfactual than take a chance with the federal criminal statute. But either way, if you can't convince the patent attorneys and they can't convince you, you're going to need legal counsel.
Re:What would other folks do... (Score:2)
If you don't believe they're doing the right thing, then sit down with your boss and present your case to him/her/them. Clearly point out the flaws in the patent and the impact it will have on technology as a whole. Do it calmy, do it professionally. If they tell you to get lost then you can go and start looking for a new job.
Your contract does not require perjury (Score:2)
This helps you only if you believe that the patent application does not fulfill the relevant legal requirements. Unfortunately, it does not help you if you just feel that the legal requirements are wrong. In that case, the patent application is technically truthful, and it is probably your obligation to sign your name to this.
However, you do have some opportunities to find holes in the application. If you find any of the claims obvious or non-original, write up a short case and require that it be addressed before you will sign. If you can find prior art related to the patent claims, demand that it be included in the application. Patent applications may not knowingly omit prior art, and applicants are required to search for prior art, so this behavior is entirely legitimate.
IANAL
This happened to me (Score:2)
Some info for you (Score:2)
OTOH, getting a patent is usually a good thing - it boosts the resume, and can lead to royalties.
Since this is a former employer, you might point out that you need to give the patent office all known prior art, and that reviewing the patent and collecting the art would be things you would be PAID to do if you still worked there. Basically, you need to establish a contract you find acceptable to you in order for you to do your job as an inventor, This may be a royalty based contract, or a per time consulting contract, or you could just work for free - depending on how you feel about your time and this idea.
I wouldn't worry about the breadth of the patent - I guarantee there are scores of succcessful patents broader. It is quite common for the patent to be initially refused and then redrafted to be more focussed. In fact, if I were looking over the patent, I would look at ways it could be even broader. A classic example
The Cohen Boyer patent established the ability to inject a gene vector into a cell and induce that cell to make a protein. Initially it was written for prokaryotes only. A one sentence add-on made it valuable for eukaryotes as well - and that dramatically increased the patent value.
Re:Please see an attorney. (Score:2)
Sigh... forgive me for following up my own post, but I see where I made the rather stupid mistake of missing or blanking out on the submitter's initial statement: Still, my advice still stands -- see an attorney. And please to not follow the advice some people are giving that you have nothing to worry about because you are no longer employed by your former employer. You could be sued for breach of contract. Can you imagine the amount of damages your employer could claim in lost patent revenues if, allegedly because of your refusal to sign or delay in signing, either: (a) your former employer loses the application (e.g., because of intervening prior art afer your refusal but but prior to the application); or (b) another entity is able to use the invention for a substantial period of time, gaining sigificiant revenue, before the patent application is finally approved? See an attorney.
Re:Inventors Duties Generally (Score:5)
However, you are under NO obligation to sign a patent app that is not properly executed. Such poor execution actually decreases the value of the patent and leaves it open to being set aside later.
Your best strategy is probably to be extremely helpful to your former company. Make the app as good as you possibly can. This will mean numerous revisions to the app. I am an engineer and I have been through application preps that have had twenty or more revisions before submission. You can wear them down doing a good job.
They may then abandon the idea as not feasible. You may also be in a better position to just be left off as an inventor after 10 or 20 go-rounds. You will also be in the loop over the next six or more months and from the standpoint of being an extremely professional, helpful former employee can make an excellent case for NOT patenting this idea.
For example, under the new patent regulations, and under all foreign patent office rules, the wrapper is laid open in 18 months whether the patent is granted or not. Does your company really want its secrets and all correspondence with the USPTO laid open to competitors in a year and a half if this patent is not granted? This means your good, but not patented, idea is open to everyone, including those in places where intellectual property is not recognized (like China.)
Does this company want to spend all the money involved in getting a patent that would be difficult and expensive to be granted, and if granted, difficult and expensive to defend? Isn't there a better use for their R&D budget?
Why not be an agent for positive change while still getting what you want?
Also, ask yourself, how would you feel if the patent was granted, but your name was not on it? Slighted? Just fine? Well, if just fine, ask if you may be excused from the process and explain why your contribution was not that significant. Remember, the named inventors must be involoved in the CONCEPTION of the idea. If you were only along for the "reduction to practice" (writing code, building hardware from someone else's directions, sketches, drawings you are NOT an inventor!). And, not being an inventor, have no business having your name on the app.
Good luck. This is one of the fine points of every engineer's or tech person's career. Make sure you do what you feel is ethically right.
Re:Patent examiners (Score:2)
Of course, a non-signing inventor CAN file a prior art statement on your own, assuming that you know the application serial number. But once you have signed the application and assigned it to the company, the Examiner will only deal with the company's attorneys.
And that oral hearing is for the company in the event that the examiner rejects their application and they go to appeal. It's not for non-signing inventors to get their views in front of the examiner.
But legally obligated for what, exactly? (Score:3)
I doubt very much that he is legally obligated to sign a patent claim to something he doesn't think he invented.
All he has to do is tell his employer, "Sorry, this patent isn't what we invented, it is too broad and I won't sign it unless it is narrowed down to what we actually did do."
(IANAL)
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What Patent Office Director Dickinson has said... (Score:5)
Here is an excerpt from an interview that Tim O'Reilly did with the director of the Patent Office earlier this year:
Tim: I talked to one developer who said, "I have my name on nine patents, and I think they're all a joke."
Patent Office Director Dickinson: Well, then, he's committed a federal crime, because you have to execute a declaration that says you believe in the patentable invention. If he doesn't, then I urge him to commit them to the public domain and --
Tim: Effectively, you know, you've got people who are being compelled by their companies
to have their name on patents and, you know --
Dickinson: They're not compelled to work for anybody, are they? It's a free country.
(This Dickinson guy is a asshole, BTW)
http://www.oreillynet.com/pub/a/patents/2000/05
-Braddock
Re:Attention Deficit Disorder (Score:2)
The USPTO has a process to accommodate you (Score:2)
Once the preliminary patent process has begun, you can then submit your side of the argument that the patent is to broad. Moreover, provide specific examples of inventions or practices that are similar to yours, thus proving why it is too broad.
By taking this road you both
1) satisfy your contractual obligation to your old
employer.
2) satisfy your contractual obligation to the USPTO as an inventor
3) satisfy your moral obligation to see the patent ruled as too broad.
Ignore it. Maybe it will go away. (Score:2)
Re:Inventors Duties Generally (Score:2)
Also, " The specification must include a written description of the invention and of the manner and process of making and using it, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the technological area to which the invention pertains, or with which it is most nearly connected, to make and use the same. [uspto.gov] " So it's up to someone skilled in the technology to make the proper specification.
As the claims are the last part of the specification, they are required to be in "full, clear, concise, and exact terms".
So if the Oath applies to the specification, you are required to make a truthful specification and claims. If the lawyer doesn't like your truth, let the former employer send you to the proper school at his expense to educate you to the part of the truth which you are missing. It's up to you to make truthful statements.
Re:They can't make you if you don't work there. (Score:2)
They can't make him, but they probably can sue him! Although there are limits on how far employment contracts can reach beyond employment, they don't become null and void just because you end employment.
I'm no lawyer, but I've consulted with a lawyer every time I've signed an employment contract, sometimes negotiating changes in clauses I found offensive. Given his beliefs, I suppect this fellow should have done this, too.
Those pieces of paper people sign when they become employees aren't just for show. I'm wondering why this fellow signed an agreement to assign inventions to the company if he didn't plan to keep it. He should have asked to have the offending language removed or changed. Granted, there is a good chance he'd be shown the door. Or he might have had to make concessions on compensation or in other areas. It depends upon the company, and how much his services are worth to the company. But taking a moral stand cannot be an afterthought.
Do get a lawyer (Score:4)
Yes, as he was compensated by the company at the time he invented whatever, and the terms of the compensation included the requirement that all IP he invents be signed over. This is merely fulfilling the contractual obligations of his former employment. Just because he isn't getting paid for new work doesn't mean he isn't still obligated to complete the work he was already paid for.
Essentially, the employer could sue him to pay back part of his wages, or surrender any stock options, etc. that he may still hold. (Depends on his termination agreement as to whether he gets to keep his options, etc.)
Typically, patent lawyers are careful to listen to the inventors, since if any of the inventors doesn't agree with the invention, they can derail the patent process at the USPTO itself. (At least, that's what they seem to be worried about.) Patent lawyers want their patents to be airtight, so if they ever have to defend them in court, the other side can't easily poke holes in them.
--Joe--
meet you obligations fully! (Score:2)
First of all, meet you legal obligations fully.
If that means signing invention forms for the filing, and an assignment document, then do so.
Second, the USPTO requires that parties filing for patent protect fully disclose all prior art known to the filer. You MUST, as part of this, list all relevant prior art known to you, and in turn your former employer MUST disclose this to the USPTO.
DON'T asume the USPTO will look for prior art: they rely primarily on existing patents, not on open publications, and so there isn't much prior art from the PTO's point of view.
So if you happen to have knowlege of some prior art then disclose it. Failing to do so can lead to the invalidation of the patent.
I don't know if the USPTO has an AC form for posting prior art, but perhaps they should.
IANAL, but I do have a (non-software) patent due to issue RSN. So I've been through the process.
-seeker
The name of the game is "Broad and Vague" (Score:2)
I work for the USPS and am listed on several patents (though strangely I was never asked to sign anything). When the patent lawyers ask you for descriptions of the application (or whatever) that they're trying to help you patent, they give you the following advice:
"Make it sound specific enough to be considered unique, but otherwise as broad and vague as possible."
Though I guess I always really knew that, it was strange to see it so openely expressed.
The really funny thing is, *very* little of what we're doing is unique, yet they are trying to patent the entire application. Half the time you listen to these lawyers, you'll find yourself wondering what the hell it is you're trying to patent.
Re:Get over it (Score:2)
IANAL (Score:3)
Now with that in mind, if you have have or come by any knowledge that the claimed invention is not both novel and useful, you personally have a duty to disclose that fact. Your patent agent (one hopes obviously) has more interest in a career than this one application, so you can probably count on her to Do the Right Thing.
the patent rules anticipate this (Score:2)
So, if your desire is to see this overly-broad invention not become patentable, not signing probably won't help. In contrast, pointing out relevant prior art and obviousness arguments, as other posts have suggested, probably would be effective. Also, as other posts have suggested, if you seriously are considering not signing, you should probably talk to a lawyer to see what your potential liability exposure is.
Re:It's a tough question, but... (Score:2)
He has one. The patent firm dealing with the matter is his lawyer, not the former employer's. That's why they need him to sign a power of attorney. Regardless of who pays the bills, the firm's client is the applicant.
Of course, IANAL.
Re:Inventors Duties Generally (Score:2)
It's required to turn over all prior art you know of. In fact, if a patent attorney or agent discovers that he/she knows of any prior art, even after the case is issued (but before printing), they have to send it in, in some instances reopening the case (kinda).
However, i have to disagree about the prior art making a stronger patent; as a patent examiner, i have only used the applicant's prior art a few times, and never as the main reference in a rejection over art. In fact, most of the time, the references the attorneys send in are, well, to use a technical term, pretty wack. I'd say 95% of the prior art I use in the prosecution of an application is stuff I found.
---
Have you talked to them? (Score:2)
I politely discussed my reservations with the company's patent attorneys and with my CEO. They ended up agreeing with my position and we didn't file the patent application.
It's easy to assume that patent lawyers are ravening inhuman beasts, I guess, but it turns out that they really are human and often quite reasonable. I wouldn't take a hyperlegalistic or adversrial tack with your old company until I'd actually had a few polite conversations with the relevant people to explain your views.
Example contract snippits (Score:2)
Here are a couple sections, so you have some sense of the type of agreement which might cause someone to be obligated to help with a patent, even after they stop working for a company.
2. (f) Patent and Copyright Registrations.
Employee shall assist the Company, or its designee, at the Company's expense, in every proper way to secure the Company's rights in the Inventions and any copyrights, patents, mask work rights or other intellectual property rights relating thereto in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments and all other instruments which the Company shall deem necessary in order to apply for and obtain such rights and in order to assign and convey to the Company, its successors, assigns, and nominees the sole and exclusive rights, title and interest in and to such Inventions, and any copyrights, patents, mask work rights or other intellectual property rights relating thereto. Employee agrees that it is Employee's obligation to execute or cause to be executed, when it is in Employee's power to do so, any such instrument or papers after the termination of this Agreement. If the Company is unable because of the Employee's mental or physical incapacity or for any other reason to secure Employee's signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Inventions or original works of authorship assigned to the Company as above, then Employee hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Employee's agent and attorney in fact, to act for and in Employee's behalf and stead to execute and file any such applications and to do all other lawfully permitted acts to further the prosecution and issuance of letters patent or copyright registrations thereon with the same legal force and effect as if executed by Employee.
12. Successors, Assigns and Survival.
This Agreement shall be binding on Employee's heirs, executors, administrators and other legal representatives and will be for the benefit of the Company, its successors and assigns. The terms of this Agreement shall survive the termination of Employee's employment and the assignment of this Agreement by the Company to any successor in interest or other assignee.
Just ask yourself, what would Jeebus do? (Score:2)
--------
Re:Used to work for the Company? (Score:2)
My employer, at least, has a general assignment as part of the new-employee packet. It's better to have a specific assignment, declaration, etc. but in a pinch (e.g., when a cow orker died) this seems to work.
example legal document (Score:2)
Here it is [pungent.org], hope it helps clarify what might be going on.
I'm not involved, I just have some insight to offer, and it's was to long for a post.
prior art research (Score:2)
Contract can't force illegalities... (Score:2)
And if his company sues him for not signing, his lawyer in court will say "Your honor, the defendant is willing to sign any document that he believes to be true."
The judge will laugh, and award all court costs to the company.
The end.
Unique or Obvious? (Score:2)
If, on the other hand, it is unique, but you believe it unpatentable because it is "obvious" then you are in a very nasty can of worms that has been opened up by the US Patent Office recently. It used to be that "obvious" meant "obvious to those skilled in the art", which was the same audience to whom you address your patent disclosure such that they can reproduce the value of your invention based solely on that disclosure. However, nowadays, "obvious" seems to be "obvious to your manager, judges, lawyers and/or juries".
This is exceedingly pathological, I agree, but it does seem to be the standard for patentability that was set by the Amazon "single click" patent's enforcability. If it is the standard for patentability, then you may be obligated to proceed with the patent due to the fiduciary responsibility of the company and its employees to its stockholders.
Re:Do you know any lawyers? (Score:2)
Surfing the net and other cliches...
Well, if you really cared to... (Score:2)
If your employer gets overzealous in the claims, as the inventor it's your job to point out that what you know of related prior art and see that it's properly cited in the application. Like wise, you must also be careful not to take credit for any part of an invention that you yourself did not invent. Keep sending back the application until you believe it to accurately reflect your contribution (and that of coinventors) along with the current state of the prior art. Don't jump to conclusion about what might be "obvious" to one that's skilled in the art -- the patent office just means that nobody has done it before.
That said... You'd be surprised what's patentable. Just because it seems stupid or overbroad you should not dismiss the patentability of something on those grounds. If it's truly silly, the patent will be turned down or ultimately be overruled (and if the company's willing to pay for that, let them). Also, patents, even stupid ones, look pretty good on the resume (if nothing else, because it shows you're familiar with IP considerations and because you're a "team player" and, presumably, technically savvy).
Sign it but... (Score:3)
"I have reviewed and understood the contents of this patent application, including the claim(s). I do not know and do not believe that the claimed invention was ever known or used in the United States of America before my invention thereof, or patented or described in any printed publication in any country before my invention thereof or more than one year prior to this application."
You are signing this under Section 1001 of Title 18 of the United States Code, which can punish false statements by fines/imprisonment. So, if you truly do not believe that it's an invention, then you should *not* sign. In fact, you must refuse to sign. However, you should have a good reason. Otherwise, your employer can take you to court to force you to comply with your employment agreement.
Also note that you have an obligation to disclose all references (articles, other patents, products, etc.) that you believe are relevant prior art to your invention. So, if you have a reason why you think the patent is too broad, and you know of prior inventions, then you should disclose that as well.
If you're only hesitating because you don't like patents, then you should sign... and if you really hate it, find a job that doesn't involve invention, or in which your employers agree with you about patents.
Thalia
P.S. The preceding is not legal advice. Follow at your own risk.
You're a FORMER employee (Score:2)
Somewhat OTP - Broadness of patents (Score:5)
In my research during chemical engineering, this situation is not only common, it's generally the way to approach chemical patents. In otherwords, say you develop Chemical Y. Chemical Y has a certain compositional makeup that might involve a metal and lots of other bits. You run and find chemical Y is good for a certain process, thus naturally you want to patent Y. Most patent lawyers and experts suggest that you want to patent as many chemicals that are close in composition to Y as you can (for example, if the metal you had was platinum, they'd insist you also claim the similar chemical based on palladium, ruthenium, rhodium, etc. because these all have similar chemical properties), even though you never actually made those materials or tested them.
What will then happen is that unless there's a major conflict with prior patents, you'll get all those derivatives of Y, including Y, patented. Later, someone may come down the road and ask to invalid your claim to a derivative of Y because you never made it, and you'd probably lose that claim in the patent, which is no big loss, because your Chemical Y is still bringing in the licensing bucks. Individual claims of a patent can be invalided, but not necessarily the whole patent itself.
On the other hand, if you only patented Y, and then find down the road that a derivative of Y is much better and would lead you more profit margins, you would have to reapply for that patent. And between the time that the Y patent comes out and you start the derivative of Y patent, someone may have beat you to the punch and gotten the patent on the derivative of Y already, especially if the change between Y and it's derivative is 'intuitively obvious', (eg, someone used a palladium version of Y instead of platinum that is part of Y).
The analogy (arrrg!) I've heard here is that if you want a bathtub of water, ask for the ocean -- it's easier to deny you parts until you get your bathtub and maybe a bit more, than it is to ask for a glass of water but you really want the bathtub.
Sure, this applies easily to chemical patents, but could also apply to business model or computer-related patents. When you read the patents here on slashdot, they seem to cover everything and the kitchen sink, but just like above, they are trying to include as much as possible to make the patent just that more valuable. If you want to see what the real meat of a patent is, the part that the company really wants to make sure they have, look at the Examples section or the support information, or look at the first claim, and nothing else. Consider every Claim beyond the first, especially those that start "The same as in Claim 1 expect where...", as the icing on the cake.
Not that I agree with the actions that those have these large encompassing patents, but this is how the patent field, as I've been exposed to it, seems to work. And it should be noted that for at least chemical patents, there *are* competent people on the patent board and generally frivolous patents there don't get issued, but as last I heard, they are still striving to fill positions for computer experts to help with the newer technology patents.
Don't sign. (Score:3)
If you end up in court, you can make exactly the statements you've made here - that you think the patent is too broad to legitimately apply to anything you have invented, and therefore it would be wrong to force other inventors to spent their resources breaking your patent (let's face it, the Patent Office will let anyone patent anything these days, preferring to let the courts do their work for them later).
If you were to lose in court (incredibly unlikely, but if you treat the judge or his cronies with disrespect you can lose regardless of the merits of your case) you might get fined a few bucks. Post on
If you are dead, you can't sign. So they won't kill you. The judge isn't going to send you to jail unless you call him a fat old clown, or refuse to bathe and wash your clothes before your appearance. So at most you get LOTS of nice publicity for being an ethical voice in a clamor of greedy amorality (that's something you may be able to turn into a better job, too!) and a nastly little fine that you can solicit donations to pay.
--Charlie
PS: I am not a lawyer, but I've successfully defended myself in court. Right makes Might, in the USA... unless you're up on drug charges, of course!
--CTB
PSS: Those of you encouraging our hero to knuckle under... how's it feel to be born without a spine?
--C
It doesn't matter whether you sign the declaration (Score:2)
Re:Somewhat OTP - Broadness of patents (Score:2)
http://www.thestreet.com/_yahoo/stocks/biotech/
Re:Patent requires an oath (Score:2)
You may open up yourself to a perjury [cornell.edu] conviction! This is a Federal felony, 5 years in prison. But not signing it if you are required to could get you sued. See a lawyer.
Not much recourse (Score:2)
Having talked to the companies councel, and to a firend who is a lawyer in the IP community, it appears that company has rights to inventions that you make for them. The assigment of IP form, is just a formality.
If you dont sign it, then they dont have to put your name on it. One of the reasons that they want to you sign is so you cant contest the patent at a later date.
As for after you have left the company, after 10 months, I am reviewing 3 patents that I did while still there, and the company is going to pay my the stanadard $$$ bonus as if I were still employed. They could file it without my name, but it is cleaner for them to get it.
Consider (Score:2)
I'll first echo the others here who have stated that you should get your own lawyer who can review your employment agreement and discuss the situation with you.
Second, you should know that there are proceedures for prosecuting a patent application over the objections of an inventor. The inventor (you) will still be listed on the patent and the patent will still issue in your name even if you've actively refused to sign the oath/declaration . If you also refuse to sign the assignment, your former company may end up suing you for breach of your previous employment contract (note that just because you've left the company your obligations under your employment agreement haven't necessarily ended). Also, your refusal will not appear on the printed patent that most people see -- it would only appear in the file history which is only generally seen during litigation/licensing negotiations/enforcement.
Third, you may want to take some time and talk to the attorney drafting the application for your company. He/She (he from here-on-out because I'm lazy) should be able to explain to you the differences between what is described in the patent application (typically called the detailed description) and what is claimed in the patent application. For example, most patent applications describe various elements necessary to understand the invention, even though those elements aren't actually going to be claimed. What is claimed defines the scope of coverage of the patent.
Fourth, you've have no duty to search for/find prior art not within your knowledge. However, if you feel that the attorney has drafted the claims too broadly (i.e. the claims attempt to protect things that others have already invented), you need to communicate that to the attorney drafting the application so that the application can be drafted more correctly. Your company's policy on searching for/finding prior art may vary. However, providing relevant prior art with the application results in better prosecution on the patent office side and a stronger patent in the long run.
Good luck!
DISCLAIMER: See professional legal advice from competent legal counsel. I don't know all the facts and am only providing you some general information about patents -- do NOT rely on this information -- speak with a lawyer! I don't represent you. Any opinions herein are mine and not those of my employer or anyone else.
I am not a lawyer... (Score:2)
a. has experience in the field
b. is licensed in your state
c. isn't working for your company
If you're really that worried, then what you see here will give you some questions to ask your lawyer, but that's it...don't do anything until you see a lawyer!
=h=
Re:They can't make you if you don't work there. (Score:2)
I understand that, but he probably signed away the right to make that choice. My point is that he didn't need to. Perhaps he could have agreed not to assign inventions to anyone else or to patent them himself, thus reserving the right to make the choice he now wants to make. But that's not what he agreed to, and now he wants to take back that agreement. That's usually not possible...
Re:Patents being stolen from inventors (Score:2)
//rdj
Do NOT sign it!!! (Score:2)
You are required to turn over any inventions that you create as a work for hire to the company, so that you are forbidden by contract from keeping them for yourself. THIS IS TOTALLY DIFFERENT FROM COMMITING PERJURY TO CLAIM NOVELTY OF INVENTION WHERE THERE IS NONE
You should send your former employer and the patent office a letter stating that (1) you do not believe the overbroad patent application should be accepted, because it does not properly represent a novel invention and that (2) you reaffirm that you have relinquished all ownership of any existing patent rights to the company for this invention, but in doing so you will not join them in falsly claiming that any such rights actually exist.