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   Assignment to Former Employer
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   Author  Topic: Assignment to Former Employer  (Read 1004 times)
Anonymousxxxxxx
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Assignment to Former Employer
« on: Nov 27th, 2007, 11:20am »
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I should preface this by saying that I am working with an attorney.  I just wanted to get additional input from here.
 
My former employer wants me to assign a patent to them.  They also want me to help with the application (I guess it's still being reviewed, some rejected claims to be appealed).  This patent was created while I was employed by them, but no assignment was ever executed.  I am the sole inventor.  I was not hired to invent.  Also, there is an employment agreement, but it makes no mention of patents.  (This is a small - less than 5 emp - company.)
 
What are my rights/obligations to my former employer?  I expect to be paid for my time, but they don't want to pay me.  Can I be sued for not helping them?  What would happen if I didn't help them, and the application/appeal expired?  What would happen if I don't assign the patent to them?  Can I help them, but do a lousy job?  Can I do anything with the patent to make their life miserable?
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MattB
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  mbycer   MBycer
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Re: Assignment to Former Employer
« Reply #1 on: Nov 27th, 2007, 4:18pm »
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on Nov 27th, 2007, 11:20am, Anonymous******** wrote:
I should preface this by saying that I am working with an attorney.  I just wanted to get additional input from here.
 
My former employer wants me to assign a patent to them.  They also want me to help with the application (I guess it's still being reviewed, some rejected claims to be appealed).  This patent was created while I was employed by them, but no assignment was ever executed.  I am the sole inventor.  I was not hired to invent.  Also, there is an employment agreement, but it makes no mention of patents.  (This is a small - less than 5 emp - company.)
 
What are my rights/obligations to my former employer?
Depends on the state you're in and the applicable law. But in the U.S., no one can force you to work (not in this century)
 
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I expect to be paid for my time, but they don't want to pay me.  
Tough noogies to them, if they want you to work gratis, you either agree or don't.  
 
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Can I be sued for not helping them?
Of course you can be sued, for not helping them or anything else or any other dirt they want to press on you.  That doesn't mean they'll win.
 
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What would happen if I didn't help them, and the application/appeal expired?  
You got it, app expires - no patent rights for anyone.
 
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What would happen if I don't assign the patent to them?  
Litigation.  If the law is on your side, there is no blatant reason for you to do this for free.  Of course, they'll stop paying for the patent process.  
 
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Can I help them, but do a lousy job?  
That just strikes me as a bad idea.
 
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Can I do anything with the patent to make their life miserable?
Yes, retain a license/ownership stake and license it to their competitors.
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Matthew L. Bycer
Registered Patent Attorney
http://www.bycer.com
http://www.cvglaw.com
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