The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Aug 20th, 2019, 8:24am

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Assignments and Licenses
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Can I be the Assignee of my Invention?
« Previous topic | Next topic »
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Can I be the Assignee of my Invention?  (Read 1262 times)
patag2001
Junior Member
**




   


Posts: 82
Can I be the Assignee of my Invention?
« on: Nov 2nd, 2006, 11:32am »
Quote Quote Modify Modify

I have an invention.  Unfortunately, I am bound by my employee/employer contract that says the employer is the assignee of any inventions.  The industry of my invention is not the market of my employer’s products. Even though I’d rather not, I am thinking of submitting a disclosure of the invention to my employer.  If my employer declines to patent my invention, does this open the door for me to file the invention on my own as the assignee?
 
Thanks!!!
IP Logged
Bill Richards
Full Member
***




   
WWW Email

Posts: 758
Re: Can I be the Assignee of my Invention?
« Reply #1 on: Nov 2nd, 2006, 12:54pm »
Quote Quote Modify Modify

Before you do anything, you should have an attorney review your employment agreement to ensure you actually do have an obligation to disclose to your employer.
Beyond that, if you're the only inventor, there's no need to assign, you are already the owner of the entire right and you would not have to do anything.  (It would be like transferring title on a car you own to yourself.  It makes no legal sense.)
IP Logged

William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
patag2001
Junior Member
**




   


Posts: 82
Re: Can I be the Assignee of my Invention?
« Reply #2 on: Nov 2nd, 2006, 1:07pm »
Quote Quote Modify Modify

Assume my fact statement is correct (I’m 100 percent certain).  If my employer does not file my invention, does this open the door for me to file?
 
Thanks!
IP Logged
Bill Richards
Full Member
***




   
WWW Email

Posts: 758
Re: Can I be the Assignee of my Invention?
« Reply #3 on: Nov 2nd, 2006, 4:13pm »
Quote Quote Modify Modify

Maybe.  It depends upon your employment agreement.  And, even if your employer decides not to pursue your invention, they may still have certain rights in whatever patent you may receive.
(Sorry!)
« Last Edit: Nov 2nd, 2006, 4:14pm by Bill Richards » IP Logged

William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
patag2001
Junior Member
**




   


Posts: 82
Re: Can I be the Assignee of my Invention?
« Reply #4 on: Nov 3rd, 2006, 5:51pm »
Quote Quote Modify Modify

Thanks for your input!
 
Sorry sounds pretty dire.  I was lucky to get some feedback on this question from a manager of a large semiconductor company I used to work for as a patent agent.  
 
He indicated that this situation comes up fairly frequently and they use a document referred to as an Assignment Release Form.  In return for the release, the company has full license to use the invention if they so wish.  However, the inventor receives full assignment of the invention to do as he pleases.
 
I thought you might be interested in knowing this.
IP Logged
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright © 2000-2004 Yet another Bulletin Board