I’m a named inventor on a patent, at my former job. They sent a document for me to sign, where I assign it over to my former company. It’s pretty standard that the inventors assign patents to there company. I fully intend to, even though I don’t work ther anymore. Just how much could I get away with if I don’t assign the rights? They can’t hold it over my head and fire me. While I have no intention of holding up this ip, it strikes me that if I wanted to, I could really screw up the process by not signing. What recourse do they have? Would I lose a lawsuit?
You are not my lawyer, just looking for hypothetical opinions
It might just be a formality - your employment agreement will probably state something like you assign all inventions to the company, and shall execute an assignment agreement upon request or somesuch. If your job involves inventing things, that’s all but a certainty.
I agree that the employment agreement is probably what is going to matter - it seems to vary on what it says - in some cases you can gum up the works…
Like Tabby_Cat says - it may be just a formality. Plenty of business have their own procedures and the USPTO often requires all inventors to agree - in order to do something. Not sure of all the nuances - as patent law is pretty complex (you have to pass a special Patent Bar exam to fully practice patent law). Although this part of patent law is probably a lot easier to understand than other parts.
I take it that it’s already been granted patent and is not a still pending application.
At the USPTO there is an Office of Pettitions that deals with this kind of issue and it’s pretty easy for them to proceed on most issues without your signature.
Note that I’ve done this before, and have assigned patents to my places of employment before. This is not something special that I can make a lot of money off of. I’d have to manufacture the device myself, strike out on my own, or assign it to someone else…but there are two other inventors on it too that still work for the company. While I expect the device to make the company a fair amount of money, the fact that I was employed there pretty much means that my work should go to them. My main question was…now that I’m not working there…just how badly can I screw with them? Can I claim it as my own and they can’t do anything? (they can’t fire me). I think they could sue me, and I probably would lose, but don’t know that.
I’m NOT going to do this, as I ethically believe the company should be assigned the work I did there, and I left on good terms. I was just curious how the ‘former employee’ aspect complicates things, and if a disgruntled employee could really screw with them.
US employers will often grant bonuses, significant enough to get your cooperation but enough to matter to the company, for accepted patent applications. They are often still payable even after termination of employment, to assist in getting your cooperation.
You would have signed a document back on your start day assigning all IP rights to the company that paid you a salary for generating it. If need be, they could pull it out of the file and submit it along with a company representative’s POA with the application. Isn’t that what they’d do if you were dead, not merely uncooperative?
At my last few companies, the bonus was a few thousand dollars.
Since I just joined a new company, the contact is somewhat fresh in my mind. It specifically says they own the IP I create, and that I will cooperate with them to sign paperwork. It also says that if the paperwork is legitimate based on the terms of the contract, and they made a valid effort to contact me but couldn’t, then they can sign on my behalf.
This is what it would come down to. Even though you’re not working there now, you’d still be retroactively bound by the terms of your old contract, which almost certainly contains a clause about assigning patent rights. If the contract doesn’t have such a clause they might still be able to win (if they can show your work should be considered “work for hire”), but it’s not a slam dunk.
Richard Feynman was in this position during the Manhattan Project. His name, like many others, was on quite a number of patents. At one point, they Powers That Be required everyone to assign their patents to the government. Feynman noticed, when filling out the paperwork, that it contained the usual clause about giving up all rights in exchange for one dollar cash. So, Feynman, being Feynman, asked for his dollar. There was no procedure in place to actually pay the dollar – it was just boilerplate language to make the transaction legal – so the guy handling the whole mess just took a dollar out of his pocket and handed it to him. Feynman gleefully took it and ran around the shop showing it off. Of course, everyone else who had signed the same papers went back to the guy, demanding their dollars.