I know that most scientists have clauses in their contracts that whatever they discover at work belongs to their employer. What would happen if they made an invention and then the employer decided against getting a patent. Could the employee get a patent on the invention or quit and start producing it themselves or is the idea always with the company and there is no expiration date?
Most inventions (Intellectual Property) in companies fall under three major categories :
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Trade Secret : the company feels that the invention is worth too much for patenting (disclosing). Patents only provide protection for a limited time (10 to 20 years) and after that it is open art i.e. free for anyone to copy. Trade secrets are forever, but on the flip side if it gets stolen, it’s hard to prove that it was your Intellectual property. Coca Cola’s recipe will be one such example.
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Patents : You get protection from the government (you have to file in different countries though and laws are slightly different) against copying for a limited number of years. After that period, anyone can use the invention.
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Publication : Most companies and IP firms offer this service. Say you have found something which the company feels is neither worth making a trade secret or a patent, they publish it. It’s just a small niche publication. That makes the invention open art and no one else can patent it.
An employee can always work out a deal with the company to not publish Or patent or keep it as their private IP, but usually that’s a case to case basis.
The employee would not automatically get the right to file for a patent. They would have to get a waiver from the employer. Like described in this link. (That’s specific to the NIH but the principle is universal.)
As it happens, in Germany the rules are slightly more favorable to the employee. The employer has a DUTY to file for a patent, or else has a DUTY to inform the employee that they’re not going to. Failure to follow these rules may entitle the employee to compensation.
Text of the German Law (see §16)
I re-read my post and believe I was not clear. If the employer did not get a patent or publish it (Publish really doesn’t mean a scientific journal publication. It may simply be a posting on an internet board like this one or Usenet etc etc where the invention is open to public viewing), then you MAYBE able to patent it or use it privately. If the employer publishes it, then you and everyone else is free to use the invention.
IMNAL and this falls in the category of legal advise. The patent system in the US has changed over the past 5 years or so. Earlier it used to be “first to invent” but now it is “First to file”. So if the employer does nothing with the invention, you can file a patent for it. Remember, if you offer an invention for sale, without proper NDAs in place, you have a very limited time window to patent it.
There may however be a non-compete clause in your employment agreement that may prevent you for filing or practicing the invention if it falls in the same market category.
I think you should consult a lawyer.
To be clear the person is not me. I read a story online about this guy who worked on a team that found an innovative way to treat wastewater but his boss was lazy and corrupt and would not file for a patent. He was upset because if a patent was filed he could wait for it to expire but since no patent was applied for it seemed like there was nothing he could do.
That doesn’t make any sense. Patents are not applied for just Technical Merit, they also need to make Business sense. Business sense as to secure a segment of the market or to prevent a competitor to get into that space.
Just because the company decides not to apply for a patent does not mean the employment agreement no longer applies. Otherwise, employees could try to patent Trade Secret IP the company wants to exploit by holding close.
Generally companies have firm ownership on anything invented on the job and anything invented within the company’s business while outside the job, particularly if the “outside of work” invention is in the area of expertise the employee was hired for. If the employee can show the invention was conceived of outside of work and has no relationship to the company’s business or the employee’s work, then they can apply for a patent under their name (as Assignee). Even then, the old saying the “a patent’s not a patent until it’s been litigated” holds true, so the employee should tread carefully (and also be aware that 99% of all patents don’t earn back the cost of patenting and patent maintenance).
It’s been a long time since I read my employment contract, but I believe that it states that they own the rights to anything I patent while as an employee and for 2 years afterwards, regardless of who actually files the patent application. In other words, if they pay for the patent, they own it. If I pay for the patent myself, they still own it. As stated upthread, if I wanted to pursue this on my own because they weren’t interested, I would have to get legal permission in writing from them to do so. There is also a non-compete clause in my contract. I can’t make anything that directly competes with them, again for up to 2 years after my employment ends. After two years, I’m free to drive them completely out of business with a competing product. 
The patent also has to be for something in the same general field as my company. I make industrial controls. If I came up with an idea for a new spiffy whiz-bang mousetrap, my company doesn’t make mousetraps and the patent agreement wouldn’t apply.
Going off on your own with a patent is generally a really bad idea. Patents aren’t cheap, and there are no patent police. If someone infringes on your patent, nobody will bother telling you about it. You have to defend your patent on your own, which means not only do you have to find infringements on your own, you also have to pay for the lawsuits to defend yourself against these patents on your own. If you win, great. You get to keep making your product and whoever infringed on your patent has to stop. But getting to that point can cost you a LOT of money.
This is especially true if you go up against a big corporation. Big corporations have deep pockets, and if they think there’s enough money to be made in breaking your patent, they can basically take the tactic of lawyering you to death. If you don’t have deep enough pockets, you’ll run out of money dealing with all of the counter-suits and other legal actions long before you manage to prevail in court. Having the patent on your side often isn’t enough. You also need to have deep enough pockets to defend it, or else that patent is worthless.
There isn’t enough detail here to know what really happened in the story. But just the idea that someone could go off on their own makes me think that it’s more likely to be a story of a disgruntled employee than anything else. The boss in the story could be corrupt, or they could just be smart enough to realize that this particular patent wasn’t worth fighting for financially. There isn’t enough information here to tell which it is.
Sometimes David does beat Goliath in the patent world, but sadly, most of the time David runs out of money and gives up. Many people have been calling for a reform of our patent system for decades because the system really doesn’t offer any realistic protections for the little guy. Our patent system isn’t likely to change soon though.
We’re in the middle of patenting something my lab group invented right now. If the University decided not to patent, no way in hell would I have done it myself. It makes no sense for an individual to patent anything. It’s very, very expensive, takes forever, and the patent doesn’t really protect you as an individual at all.
If it is a good idea, there will be companies that infringe on your patent (and you told them exactly how to do it in your publically-available patent application). What do you do then? There is no Federal department of Patent Infringement. You have to defend your patent yourself. That means lawyers and time, and these suits can and will drag out for years. I guarantee the company infringing your patent has more money and better lawyers than you do. They will drag it out until you are out of money and can’t defend yourself anymore.
And that’s just domestic. If you want to file the patent internationally, that costs hundreds of thousands of dollars. And almost impossible to enforce unless you’re a multi-national billion dollar company.
When my University files the patent, they pay to defend it. They’re not even filing internationally on this one because they don’t think it’s worth it. If I wanted that I’d have to start a company and do it myself.
TLDR, unless you’re a billionaire with unlimited time, patenting is useless.
Blockquote Going off on your own with a patent is generally a really bad idea. Patents aren’t cheap, and there are no patent police. If someone infringes on your patent, nobody will bother telling you about it. You have to defend your patent on your own, which means not only do you have to find infringements on your own, you also have to pay for the lawsuits to defend yourself against these patents on your own. If you win, great. You get to keep making your product and whoever infringed on your patent has to stop. But getting to that point can cost you a LOT of money.
Yes. My dad wanted to get a patent several years ago. They went to file, and found that some of the research he’d done (in a big name Ivy League university) had been part of a somewhat similar patent by some other people who he’d worked with. In order to patent his invention (create and store polarized helium for more effective MRI’s I think it was) he would have to contest the other patent, prove that it drew on his work -which they’d failed to mention in their patent - and then possibly argue the merits of each patent in court.
not worth it.
I wonder - does the rule still apply, if you publish then it becomes impossible to patent? The best revenge would be to publish, then it becomes something anyone could do without royalties. If you wouldn’t get royalties anyway, who cares? In the first-to-file world, what stops someone from getting a friend to file?
Absolutely. And it is a common strategy used by companies. If you got 100 ideas, you patent the 2 most promising and publish the 98 others. Now even if you missed something and one of the 98 was a good idea in retrospect, the competitor cannot patent it.
In the U.S., publishing prevents others from filing, as it becomes prior art, but it does not prevent the inventor from patenting. Publishing starts a one year clock on the right to file for patent through the USPTO. Publishing also means that foreign filings are barred as of the date of publication.
Some people just like to brag about what they’ve invented.
Mostly challenges from the company that didn’t want to patent it in the first place. If they could convince the patent office or the courts that the friend got the idea from the employee, they could likely take over the patent, or at least bar the issue of the patent.
One of the fundamental principles of patent law is that patents can only be issued in the name of an inventor. The friend would not be the inventor, and as such, could be accused of fraud. At a very minimum, their name would be removed from the patent application or patent.
ETA: Okay, I guess quotes don’t work like that anymore?
I fixed your post. You have to put the quote tags on separate lines.
I take issue with those saying filing a patent as an individual, or a small business, isn’t of value. As others point out a patent has little value if you don’t have the resources to defend it, but it can be of great value if you sell or license it to a large company that does have those resources.
Unfortunately, it’s very difficult for a small entity to license or sell technology to a large corporation. Large corporations tend to be very conservative and suffer from a not-invented-here syndrome.
Individuals filing for a patent are much like people opening a small business. Done properly, it can work, and make you money, but it needs to be done with your eyes open. Too many people fool themselves into believing they’ve got the next billion dollar idea, and that they can do it all themselves. That rarely works out.
But if you have a reasonable business plan, and a realistic notion of how much your idea is actually worth, you can make some money at it.