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Topic: Employer's potentially wrong filing practice? (Read 365 times) |
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worker anonymous
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Employer's potentially wrong filing practice?
« on: Nov 26th, 2004, 2:28am » |
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I have been contacted by my former employer on the grounds that they want to re-file a provisional patent application because the original patent application (also provisional) has "expired". I am indeed the inventor, and I have assisted them in the past in patent issues, but this time I am unconfident. I fear that, due to their lack of familiarity with patent law, they may do something inappropriate and I myself will suffer from it in the future as a prolific inventor.
My issues are:
1. Since major parts of the idea behind this patent have been widely publicized by my employer for almost two years now, how can I sign the standard inventor declaration that I am sure this idea has not been exposed for over 12 months?
2. I am generally not happy with the idea of having them file new patents related to work that I've done two years ago without me being in complete control for that time over exposure, the patent claims and the patent application's content.
Any Advice? I again state that I want to help them wherever I can, and that this employer has little knowledge and understanding of patent law.
Thanks everyone,
worker anonymous
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Wiscagent
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Posts: 843
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Re: Employer's potentially wrong filing practice?
« Reply #1 on: Nov 26th, 2004, 8:42am » |
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Your employer asked you to “sign the standard inventor declaration” which is associated with a provisional patent application. A good place to start the discussion is with the individual who wrote the application. Express your concerns to that individual.
Take a close look at the declaration. Would the document have you definitively state that the invention has not been publicly disclosed or on sale? That might be a problem, you’d be swearing to something about which you don’t have certain knowledge. For one thing you don’t know what the company has disclosed. Additionally the provisional application may not have any claims; in which case the “invention” has not yet been defined.
If the declaration would have you state that “to the best of my knowledge…” that would appear safer, but again the “invention” may still be undefined.
This is one situation where your personal concerns and your former employer's concerns should largely align. The advice of their patent practitioner should be helpful. The former employer has a large stake in doing the application and associated papers correctly. If they end up filing a regular application and being granted a patent based on this provisional, it will cost them in the ballpark of $10,000. If they do it wrong, they could end up with a less than worthless patent. I say “less than worthless” because they could incur substantial costs if they try to enforce an invalid patent.
I’m not an attorney, you’re not my client, and this isn’t legal advice.
Good luck,
Richard
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Richard Tanzer
Patent Agent
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eric stasik
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director, patent08
 
Posts: 391
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Re: Employer's potentially wrong filing practice?
« Reply #2 on: Nov 26th, 2004, 9:18am » |
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worker anonymous,
If anything on the declaration is incorrect, or untrue, don't sign it. It's your declaration, not theirs. And so it's your ass.
1. Since major parts of the idea behind this patent have been widely publicized by my employer for almost two years now, how can I sign the standard inventor declaration that I am sure this idea has not been exposed for over 12 months?
If the invention was made, used, sold, offered for sale, more than one year before application for patent was made, you cannot get an invention.
This isn't, however, always black and white - often it is not - your obligation as an inventor is to disclose anything "material" to the examination of your application to the examiner.
37CFR 1.56 duty to disclose information material to patentability.
http://www.bitlaw.com/source/37cfr/1_56.html
The duty is affirmative. Disclose what you know and let the examiner sort it out.
2. I am generally not happy with the idea of having them file new patents related to work that I've done two years ago without me being in complete control for that time over exposure, the patent claims and the patent application's content.
What's not to by happy about? Have you assigned your invention to the company? I assume yes. Do you retain any rights to the assigned invention? I assume no.
If so then as long as they don't add any new matter, it would seem to me that they are well within their rights to file as many different applications as they like. Charge them handsomely for the time your cooperation requires.
regards,
eric stasik
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eric stasik
director
http://www.patent08.com
patent08
patent engineering,
business development,
and licensing services
postbox 24203
104 51 stockholm
sweden
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Isaac
Senior Member
Posts: 3472
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Re: Employer's potentially wrong filing practice?
« Reply #3 on: Nov 26th, 2004, 7:26pm » |
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A provisional does not require an oath and is not going to be
examined other than to meet formalities until a non provisional
is applied for.
So for now the inventors duty is simply to point out to the
assignee that the filing may be a waste of money and also to
point out the duty to disclose when the non provisional is
filed. And there just isn't much money involved anyway.
If major parts of the invention have been disclosed, some novelty
may still remain undisclosed. As long as the points of novelty are
in the provisional (and of course you can add new ones even
now. The old provisional is not relevant anyway), I don't see
a problem.
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Isaac
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