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I have an Invention ... Now What?
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   Two Inventors, Two Companes
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Adam Schwartz
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Two Inventors, Two Companes
« on: Oct 24th, 2006, 2:41pm »
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Hello all,
 
After receiving some info from my previous post, a new question has arose that someone might be able to  answer:
 
Lets say my friend and I have an idea: he is required to give it up to his company, but I am not required to give it to mine.  
 
Can his company claim it even though I am co-inventor and I'm not under contract with them?  
 
If they can not, how can I persue the idea being that I can't patent it because my friend is under contract, and he is a co-inventor who i must list on the patent?
 
Thanks!!
 
Adam
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Bill Richards
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Re: Two Inventors, Two Companes
« Reply #1 on: Oct 24th, 2006, 4:40pm »
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Yes.
If, indeed, you are both inventors, and the other person must assign his rights to his company and you do not, the other company will have ownership rights in any patent that issues to you and the other person jointly.  As joint owner, the company will have all the rights that you do to practice and/or license the technology.  The only difference, not necessary right now, is in litigation.
Even if you decide to not patent your invention, depending upon his employment agreement, his company may have rights in the technology anyway.
« Last Edit: Oct 24th, 2006, 4:47pm by Bill Richards » IP Logged

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Adam Schwartz
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Re: Two Inventors, Two Companes
« Reply #2 on: Oct 26th, 2006, 9:12am »
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I am rather certain that my co-inventors company would have interest in this technology. That being said, it seems that his employee agreement is definitely going to give control of the idea to the company.  
 
Is there any way to keep this idea ours? I can't patent it myself as that would be fraud.  
 
Also, is there a way that we could somehow bargain with the company to say: we will give you this idea, and if you decide to take it, you hire my coinventor and let us work for the company on the project? Maybe pitch it under an NDA?
 
Again, thanks for the responses,
 
Adam
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Isaac
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Re: Two Inventors, Two Companes
« Reply #3 on: Oct 26th, 2006, 9:53am »
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on Oct 26th, 2006, 9:12am, Adam Schwartz wrote:
Also, is there a way that we could somehow bargain with the company to say: we will give you this idea, and if you decide to take it, you hire my coinventor and let us work for the company on the project? Maybe pitch it under an NDA?

 
Based on your description what you have to bargain with is your part ownership in the invention.   It is possible that the company would be interested in acquiring 100% ownership.  Whether or not the other company is willing to accept your terms in return for that interest is hard to say.
 
I would not expect an NDA covering an invention in which the company has part ownership already to be effective, but maybe the laws in your state are stranger than I would expect.
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Isaac
Adam Schwartz
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Re: Two Inventors, Two Companes
« Reply #4 on: Oct 26th, 2006, 10:05am »
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Thank you Isaac,
 
However, if the company already has part ownership, then we really have nothing to bargain with, do we? Aside of the fact that can refuse to tell them about the idea in the first place, but then that doesn't help us either.  
 
Also, how can we claim part ownership if it is illegal for us to persue a patent as my co-inventor must sign the idea over to the company anyways?
 
Thanks,
 
Adam
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