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Patent ownership assignment request from ex company Patent

Discussion in 'Copyright, Trademark, Patent Law' started by Tina J., Oct 6, 2021.

  1. Tina J.

    Tina J. Law Topic Starter New Member

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    Jurisdiction:
    Illinois
    I submitted a good patent application with my *previous* company which they terminated me brutally. And now as a part of patent filing, they sent me an "assignment" file to sign which has weird terms to me and I never had an experience with signing such a file (I was going to sue the company so I'm a bit suspicious about their request).

    Here is the file. It uses the following language. What does it mean? Is it a common practice? Is it safe to sign?

    ....
    The undersigned hereby authorize and request the Commissioner of Patents and Trademarks to
    issue said Letters Patent to said assignee.
    The undersigned hereby authorize and request the attorneys of record in said application to insert
    in this assignment the filing date and serial number of said application when officially known.
    The undersigned warrant themselves to be the owners of the entire right, title and interest in said
    invention or improvements and to have the right to make this assignment, and further warrant that there are no outstanding prior assignments, licenses, or other encumbrances on the interest herein assigned.

    ....
     
  2. adjusterjack

    adjusterjack Super Moderator

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    More details are needed.

    What was the patent for?

    Did you invent something while employed?

    Did you have a contract as to who owned the patent?

    Did you file the patent application under your name or the company name?

    Start with those questions. Other may have more questions.
     
  3. Tina J.

    Tina J. Law Topic Starter New Member

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    Yes. I invented something while I was employed at the company. I had no contract about ownership. I submitted the idea to the company innovation portal. So not sure if it's my name or company name.
     
  4. Zigner

    Zigner Well-Known Member

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    Did you invent it while "on the clock" and/or using company resources?
     
  5. Tina J.

    Tina J. Law Topic Starter New Member

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    Yes. With their laptop and sometimes during work days. I just don't want anything going wrong with my inventorship and my name on it.
     
  6. adjusterjack

    adjusterjack Super Moderator

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    Generally, anything you develop as an employee is owned by your employer in the absence of an agreement otherwise.

    Check the USPTO website patent search to see if the application has been submitted yet.

    You might be out of luck.
     
  7. zddoodah

    zddoodah Well-Known Member

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    Does "my *previous* company" mean your former employer? Or a company in which you held an ownership interest? Or something else?

    What do you mean that you "submitted . . . [the] application with" the company?

    Who are "they"?

    If, in fact, your quote is accurate, I wouldn't sign it solely because of the lousy grammar. Beyond that, these questions call for legal advice, which isn't appropriate for an online forum. Particularly since you said you intend to sue this company, you should do nothing without first obtaining advice from an attorney who has thoroughly reviewed the matter.
     
  8. Tina J.

    Tina J. Law Topic Starter New Member

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    Why out of luck? They are also asking me to sign the assignment for previous patents which were already filed as well.
     
  9. Tina J.

    Tina J. Law Topic Starter New Member

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    Yes, I meat my former company. I didn't own any company!
    So big companies have a portal to submit ideas for patentability. I submitted my ideas there. They is the company.
    Well, I don't have an attorney. That's why seeking help here.
     
  10. army judge

    army judge Super Moderator

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    Here's a thought from an old reprobate.

    When your friend receives that W2 and 1099 largesse, ask him to give you five or ten thousand to retain an attorney to pursue your patent issues.

    You will pay him back after you receive your invention loot.
     
  11. Tina J.

    Tina J. Law Topic Starter New Member

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    5-10K is a looot of money for attorney. We have to avoid attorney fees as much as possible.
     
  12. zddoodah

    zddoodah Well-Known Member

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    Please read the Legal Disclaimer at the bottom of every page at this site. Message boards are not a substitute for legal advice.

    I am not an expert in patent law, but my understanding is that patents initially are only awarded to individuals, but they can be assigned to business entities. It sounds like that's what your employer is looking to do here. However, neither I nor anyone else here can form reliable conclusions based on the limited information available.

    Is it a common practice? Yes, but what does that matter?

    Is it safe to sign? I don't even know what that means.

    You PROBABLY could get a free initial consultation but shouldn't have to pay more than a few hundred dollars for it. It's not going to cost you $5-10k.
     
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  13. welkin

    welkin Active Member

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    That is not correct. Patents can be issued to an individual or any legal business entity.
     
  14. flyingron

    flyingron Well-Known Member

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    No, the applicant must be an inventor. Corporations do not have any mental capacity to invent things. It can be assigned to a corporation, but the applicant has to a person. The USPTO won't issue patents to AI entities either.
     
  15. Zigner

    Zigner Well-Known Member

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    It's pretty cut-and-dry.

    Patent FAQs

    Who can apply for a patent?
    A patent may be applied for only in the name(s) of the actual inventor(s).
     
  16. Tax Counsel

    Tax Counsel Well-Known Member

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    Well, that's not technically correct. The applicant must be the inventor or a few other persons as provided for in the USPTO regulations. The regulations state:

    (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.

    (b) If a person is applying for a patent as provided in § 1.46, the word "applicant" refers to
    the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and not the inventor.

    37 CFR § 1.42(a) & (b).

    Then 37 CFR § 1.46(a) states in relevant part: "A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent."

    The inventor must always be named in the application. But the applicant can be a person other than the inventor if the inventor has assigned the invention to the person prior to application. The application must include the information to support the assignment. Corporations may be assignees of a patent. So a corporation could be the applicant for a patent, but only after getting assignment of the invention from the inventor prior to application. For example, see this Apple, Inc., patent application. It lists the individual inventors, but shows Apple as the assignee.
     
  17. Tax Counsel

    Tax Counsel Well-Known Member

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    The Patent Office's statement there gives the wrong impression, IMO. It's true that the patent must name the actual inventors. But the applicant can be someone other than the inventor as stated in the regulations I cited above.
     
  18. Tax Counsel

    Tax Counsel Well-Known Member

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    When you started with the company the company it should have had you sign an agreement about ownership of ideas you have during employment with them in which you agreed to assign to them any invention you come up with. That agreement would then obligate you to sign off on the assignment that the company now wants from you. The company must have an assignment from the inventor (you) in order to apply for the patent. If you are under no obligation to execute that assignment, then that sucks for the company because you can refuse to assign the invention and it'd have nothing it could do about it. Or, you could ask for a whole bunch of money for the assignment. Whether the company will pay it would depend on how valuable that invention is. Before you sign the assignment, I'd suggest you review the assignment the company sent you with a patent lawyer.

    Just because you worked for the company does not automatically make anything you invented while employed property of the company. The employer needs to nail down agreements in advance obligating you to assign the invention.

    Note that this differs from the rule in copyright law, which has a work for hire provision in which the copyright of works by employees created within the scope of employment belongs to the employer.
     
  19. welkin

    welkin Active Member

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    If that were true, Microsoft wouldn't have 90,000 patents registered in their name or IBM with 9,130 in 2020 alone.
     

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