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I have an Invention ... Now What?
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   Inventing under contract
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Adam Schwartz
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Inventing under contract
« on: Oct 23rd, 2006, 1:42pm »
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Hello Everyone,
 
I have a question about an invention (obviously) but seem unable to find a good answer. Any insight would be greatly appreciated.
 
I have developed a product idea in conjunction with a friend of mine. However, we are both under contract by our respective companies that anything we develop belongs to them.
 
We do not have th financial ability to quit our jobs and go for a patent. So here is the problem: What can we do to get this idea into the hands of a company who can benefit from it, but maintain ownership and rights to the idea/product.
 
Thanks!
 
Adam
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Wiscagent
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Re: Inventing under contract
« Reply #1 on: Oct 23rd, 2006, 2:31pm »
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You wrote "we are both under contract by our respective companies that anything we develop belongs to [our employer].  One fairly inexpensive way to start is by reviewing your current employment contract with your own attorney.    What you wrote may be precisely correct, or not.
 
My (non-lawerly) understanding is that some employment contracts appear to be broader in scope than they actually are.
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Richard Tanzer
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Re: Inventing under contract
« Reply #2 on: Oct 23rd, 2006, 3:28pm »
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Hi...
 
I am a marketing strategist who has handled the negotiating of a portfolio of  patents involving sophisticated technology to the major global players in the industry.  
 
If your invention was NOT created under a "work for hire" situation, which can most certainly be determined by any qualified attorney reviewing your employment agreement, then I would be happy to explore the licensing of your patent with you. (There is generally no need to "sell" a patent. An "exclusive worldwide licensure grant" can be, for all intents and purposes, equal to a "sale").
 
At your service--
 
Patent Marketer
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Bill Richards
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Re: Inventing under contract
« Reply #3 on: Oct 23rd, 2006, 5:04pm »
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"Work for hire" is generally a copyright term of art.  There is a concept called "hired to invent", and it may come into play here.  However, if there are employment agreements in place, they would likely control.
Some are very narrow and some, like the one I was under until recently, covered EVERYTHING I conceived of.  Copyright, invention, you name it.  Work-related or not.  The only way out was to get the employer to agree that they neither now or in the future might have a use for it.  (It's a large research lab into many, many technologies.)
If you're concerned, have the agreements reviewed by an attorney.
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
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Adam Schwartz
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Re: Inventing under contract
« Reply #4 on: Oct 23rd, 2006, 6:17pm »
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Thank you for your responses.
 
I reviewed my contract today and there is a clause which says:  
 
This paragraph (the one denoting what would be company property) shall not apply to "properties" which do not relate to the present or planned business or research and development of the company
 
Now being that my company has only done one thing for 35 years, and since i work in sales with product development i know thats where they are going, do you think i would stand a chance?
 
Also, something that bugs me: in order to find out if i can pursue this patent, i have to tell them of my idea so they can agree it doesn't conflict, whats to stop them from taking it from me?
 
Thanks again,
 
Adam
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