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(Message started by: Adam Schwartz on Oct 23rd, 2006, 1:42pm)

Title: Inventing under contract
Post by Adam Schwartz on Oct 23rd, 2006, 1:42pm
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

Title: Re: Inventing under contract
Post by Wiscagent on Oct 23rd, 2006, 2:31pm
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.

Title: Re: Inventing under contract
Post by Patent_Marketer on Oct 23rd, 2006, 3:28pm
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

Title: Re: Inventing under contract
Post by Bill Richards on Oct 23rd, 2006, 5:04pm
"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.

Title: Re: Inventing under contract
Post by Adam Schwartz on Oct 23rd, 2006, 6:17pm
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

Title: Re: Inventing under contract
Post by Bill Richards on Oct 23rd, 2006, 6:36pm
It might be worthwhile to know the disclosure requirements you may have.
As for the stealing the idea, you are still the inventor.  Having said that, you could disclose under an NDA (Non-Disclosure Agreement).

Title: Re: Inventing under contract
Post by Adam Schwartz on Oct 23rd, 2006, 7:36pm
I would be happy to copy the terms I signed to, so long as that in itself isn't a violation of anything. If its not, i'll be glad to get some advice. Is that an ok thing to do?

While i wait for a responce, i'll see what this NDA idea is.

Thanks,

Adam

Title: Re: Inventing under contract
Post by Bill Richards on Oct 24th, 2006, 5:19am
Adam,
You may contact me offline via e-mail.
Bill Richards

Title: Re: Inventing under contract
Post by Sudhir Kumar Aswal on Oct 27th, 2006, 4:11am

on 10/23/06 at 18:17:13, Adam Schwartz wrote:
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


Dear Adam,

You had not disclosed the whole of the agreement being a patent attorney and lawyer i can tell you that if you are hired for some other purpose and you have invented something else which is not under your term of employment. You may file a patent for it. Nevertheless you will be true and first inventor for the invention. But for detailed opinion you must disclose your agreement in full.



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