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I have an Invention ... Now What?
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   Patentable Idea Help
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   Author  Topic: Patentable Idea Help  (Read 1172 times)
qednick
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Patentable Idea Help
« on: Sep 10th, 2004, 2:41pm »
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I'm not sure if I'm posting this in the correct place.  
 
A company contracted me to do a job which involved building a prototype. Before the contract was signed I had been thinking hard about tackling the job. In a stroke of genius I came up with an incredible solution to a problem they had been trying to cure. I incorporated this into the working prototype. When I flew out to their premises they couldn't believe what they saw. They were high fiving each other and basically jumping over the moon.
 
We signed the contractor agreement in which I would receive several hundred thousand dollars and a stake in their company once the job was complete. I was told that my name would (by law) go down as inventor on the patent application they would be filing for my invention.
 
To cut a long story short, 4 months later they dubiously cancel the contract by falsely claiming breach on my part (that's a whole separate lawsuit) and leave me with nothing.
 
In the original contract it stated that anything I do for them under the contract becomes theirs.
 
My attorney told me that I might be able to file my own patent as inventor if I can prove I invented it first. Additionally, if they've already filed for a patent with my name on (before we fell out), it would further prove I invented it.
 
My questions are:
 
1] How much does it typically cost to file a patent application?
 
2] What is the potential position with this company if I do file my own patent? I'm pretty confident that I can prove wrongdoing on their part as far as the contract goes.
 
Thanks!
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Isaac
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Posts: 3472
Re: Patentable Idea Help
« Reply #1 on: Sep 10th, 2004, 3:29pm »
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I think the key issues are whether the contract term saying what's your's
is theirs is effective and whether the wording includes an
obligation to assign the patent.  If so, then you can apply
for a patent but you would be spending money for something
you have to in the end give up.
 
If not then as the inventor, you have the right to apply for
a patent and to hold any resulting rights.
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Isaac
qednick
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Posts: 7
Re: Patentable Idea Help
« Reply #2 on: Sep 10th, 2004, 6:21pm »
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Hi Isaac, thanks for your response.
 
The contract does include such wording. However, I am about to get into a suit regarding the validity of the contract because they have made deliberate attempts to renege on it. In other words, I did the stuff and they are refusing to pay. They have found some lame excuse to cancel on me which I can easily prove in court of law.
 
Now, if they haven't lived up to their end of the bargain and I can subsequently prove a wrong was done on their side to effectively "screw" me out of things then surely the wording in the contract doesn't apply anymore?
 
What I'm trying to say is: how can they possibly deliberately renege on the contract yet still hide behind any protection it previously gave?
 
Thanks!
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Isaac
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Posts: 3472
Re: Patentable Idea Help
« Reply #3 on: Sep 10th, 2004, 10:50pm »
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Some contract terms can survive even a breached contract.  For
example if the contract included a non disclosure agreement
because it was necessary for you to learn some proprietary
info in order to provide the requested service, do you think
you could blab the client's secrets if you were not paid.
 
I'm not saying for certain that the assignment clause is
enforceable.  I'm saying that L would want to see more detail
than you should post here before I'd express an opinion that
was more than a guess.
« Last Edit: Sep 10th, 2004, 10:52pm by Isaac » IP Logged

Isaac
qednick
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Posts: 7
Re: Patentable Idea Help
« Reply #4 on: Sep 12th, 2004, 7:10pm »
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Thanks for your help Isaac, I've set up an apt. with my attorney tomorrow. Smiley
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