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   protecting my claims from employer
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   Author  Topic: protecting my claims from employer  (Read 1414 times)
robby1140
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protecting my claims from employer
« on: Dec 27th, 2007, 4:49pm »
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I had created some IP before I joined my employer. After I joined them, they wanted to use my IP so I licensed to them via a licensing agreement.  
 
Well they designed in my IP, modified it to fit their design and now claim that it was their design so they owe me nothing.
 
What documentation can I use to prove I was the one who built this IP.
 
 
Another argument they have is that they modified it so much that it is their IP and not mine. They say, yes we would have paid you if we used your IP exactly. Is that true? I would assume derivative IP means that the core IP has to be still paid for.
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JSonnabend
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Re: protecting my claims from employer
« Reply #1 on: Dec 28th, 2007, 8:38am »
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Much depends on the nature of your IP and the terms of the license.  Have you spoken with an attorney directly about this yet?   If you have sufficient legal grounds to support your position, it might make sense to have a qualified IP attorney draft a C&D type letter to the employer.
 
- Jeff
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SonnabendLaw
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robby
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Re: protecting my claims from employer
« Reply #2 on: Dec 29th, 2007, 9:28am »
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I do intend to ultimately speak with an attorney.
 
However, I want to get educated about possibilities before I speak with one. (This is also a way for me to ascertain which attorney is good when i interview them)
 
So, if anyone has any suggestions based on the minimal facts I have listed or wanted some more clarification on any of the facts, please post and I will reply
 
thanks
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BotchedExperiment
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Re: protecting my claims from employer
« Reply #3 on: Dec 29th, 2007, 10:56am »
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My opinion, which is definitely unqualified (in both senses of the word):  Go see an attorney.
 
You'll never get as "educated" about patent litigation than someone who does it for a living.  Chances are a patent litigator can tell you within 1/2 hour whether you have a case or not.
 
As for how you choose a good one, you can look at the various "top attorneys" lists for your area.  Also, since IP law is fairly small, most IP attorneys in an area know most of the other IP attorneys, so ask around.  Just try to find somone with experience in your technology area and you'll probably be fine.
 
As for the basics of patent infringement, you can look at "patent it yourself" or "patents for beginners" both by David Pressman and published by Nolo press.
 
I'm not an attorney, so this is not legal advice or a legal opinion nor do I work on patent litigation, but here's what I understand about patent infringement:  To infringe, all the components of one of your claims must be in use by the infringer.  If you claim abc, and they are using abcd, they still infringe.  If they're using ab, they don't infringe.  What you're saying is that they're using ab'c, where they say that b' is different than b.  Whether b' is the same as your claimed b is impossible to determine without all the facts,  the patent in question and experience in patent litigation.  So, go see an attorney.
 
Good luck
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Repeating experiments since 1998.
biopico
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Re: protecting my claims from employer
« Reply #4 on: Dec 29th, 2007, 12:05pm »
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I would also carefully weigh how you want to pursue further-legally or friendly.
 
When it comes down to IP issues with an employer, it is common that the employer gets aggressive and/or aggravated.  
 
So think about whether you want to pursue legally or not given the obvious disadvantage (relationship with your employer).
 
Of course, if you decide to legally pursue further, you know who you need to talk to.  
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Registered Patent Agent Specializing in All Areas of Biotechnology
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