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I have an Invention ... Now What?
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   Two Inventors, Two Companes
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Isaac
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Re: Two Inventors, Two Companes
« Reply #5 on: Oct 26th, 2006, 11:15am »
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on Oct 26th, 2006, 10:05am, Adam Schwartz wrote:
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.

 
Not quite correct.  A company with only part ownership can use the invention without being sued by the co-owner, but cannot sue or exclude others or offer an exclusive license without the cooperation of the co-owner.   To the extent that the company desires those rights you have something to bargain with.
 
Quote:
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?

 
The co-inventor is required to assign *his* share of the invention to the company.   That may or may not mean that you cannot file a patent application.  If it is legal for you to file an application it may or may not be advisable for you to do so.   Making those determinations would require specific legal advice based on the details of your particular situation.  
 
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Isaac
Adam Schwartz
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Re: Two Inventors, Two Companes
« Reply #6 on: Oct 26th, 2006, 11:41am »
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"To the extent that the company desires those rights you have something to bargain with."
 
Sorry if I seem to be missing something here, try and bear with me:
 
I understand now what you mean by the company wanting 100%, that way they can do as they wish. Now, If my friend and I approach his company with this idea, as you say I have partial ownership of the idea. What do I need to do to "prove" that partial owernship to them when we approach the company?
 
Also, it seems in their interest to secure 100% rights to the idea, rather than be troubled my my interests which may not fit with theirs: Would they potentially be looking for me to sign a document forking over my partial ownership to them? I assume that is where you mean i have barganing power: If they want my rights, I suggest what i want in exchange.  
 
Again, thank you
 
Adam
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Bill Richards
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Re: Two Inventors, Two Companes
« Reply #7 on: Oct 26th, 2006, 4:03pm »
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First, you do not have "partial" ownership.  You (assuming you're both inventors) are co-owners.  Each has full rights to the entire invention.
Proof of being a co-inventor involves good records, properly maintained, preferably contemporaneous with the work, and, ideally, witnessed by a disinterested third party.  It's an evidentiary issue that revolves around credibility of the inventor(s).  There are lots and lots of court cases that cost the litigants hundreds of thousands of dollars to decide inventorship.  It's seldom black and white and generally very complex.  It would take a review of the evidence to tell for sure.
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
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Hear hear
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Re: Two Inventors, Two Companes
« Reply #8 on: Nov 7th, 2006, 7:43pm »
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it all comes down to this with a joint ownership.
 
Unless there is a signed agreement. Each owner will own an equal share of the patent.
 
Each owner can exploit the patent, sell rights, etc of that patent to any other entity without the consent of the of other owners of the patent.
 
Therefore I recommended you have a talk to the business in doing a signed agreement. That ensures a agreement from atleast 51% of owership. Any returns, upkeep fees are to be payed equally by all owners.
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Bill Richards
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Re: Two Inventors, Two Companes
« Reply #9 on: Nov 8th, 2006, 4:51am »
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on Nov 7th, 2006, 7:43pm, Hear hear wrote:
Unless there is a signed agreement. Each owner will own an equal share of the patent.

Not true.  Hired-to-invent is "firmly grounded in the principles of contract law".  See, e.g., Banks v. Unisys, 00-1030 (Fed. Cir. 2000).
 
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
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