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Author Topic: 25 year old invention ignored by employer  (Read 3133 times)

mdm55

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25 year old invention ignored by employer
« on: 01-05-11 at 06:47 pm »

I am a registered patent agent and I have a pending patent application based upon an experiment that I carried out over 25 years ago when I was on the technical staff at Watkins-Johnson Company. I was working on circuit assembly techniques for missile programs such as AMRAAM and HARM, and the eutectic solder attach of GaAsFETs to circuit substrates and carriers was one of the issues that I dealt with. At the time, the standard approach was to place a gold/tin solder preform on the bonding site, heat the circuit until the solder melted, and gently scrub the die into the molten solder. This operation was typically carried out under a blanket of a neutral or slightly reducing gas. This approach did not remove oxides that were present, but largely displaced them by the scrubbing operation. The integrity of the die attach process could be evaluated by applying a lateral force to the die. When tested to failure, the die typically sheared away from the circuit in one piece, or left a small amount of GaAs behind.

As a materials scientist, I was interested in finding a method that could remove the native oxides on the solder preform and enhance the solder bonding of the GaAsFET. I dissolved ammonium chloride in methanol and applied a drop of the solution to a GaAsFET die positioned on a gold/tin preform placed on a dummy circuit. The methanol was then evaporated, leaving a light "frost" of ammonium chloride. I selected ammonium chloride since it decomposes into ammonia and hydrogen chloride gases at a temperature below the melting point (283°C) of the eutectic gold/tin preform. Upon placing the assembly on a hot plate, the ammonium chloride decomposed and the gold/tin preform melted and completely wetted the bottom of the GaAsFET die. Inspection after cooling revealed a continuous fillet around the base of the die and a smooth shiny surface that was atypical of the conventional die attach method. During shear testing of the device, the die invariably cleaved, leaving 100% coverage of the die attach surface.

Watkins-Johnson wasn't interested in further investigation or development of the process I had demonstrated for two main reasons. First, the devices they were using had aluminum gate metallization and they were sure that the ammonium choride would attack the gate. Second, they were working with low power, low noise devices for which heat transfer was not a critical concern.

I subsequently worked at Hughes Aircraft's Microwave Products Division where they were manufacturing power GaAsFETs with gold metallization and back-etched vias. Since heat transfer was an important concern, I repeated my earlier experiment by attaching one of their GaAsFETs to a standard gold-plated copper rib. The die attach result was similar to that I had obtained with the Watkins-Johnson GaAsFET, with excellent flow and a shiny oxide-free surface. However, upon cooling I heard a slight "tink" sound. The Hughes GaAsFET had sheared in half due to the compressive forces induced by the copper rib. The die attach process had produced a much more robust bond that resulted in much greater mechanical coupling than was typical. The die had fractured under the compressive stress in part because of its size and in part because of the stress concentrations introduced by the back-etched vias. In spite of the excellent coupling, Hughes wanted no part of an assembly process that could destroy a die.

Obviously, since the basic process had been demonstrated at Watkins-Johnson, I had no intellectual property rights and aside from repeating my initial experiment with a Hughes GaAsFET, I did no further work on the process. In 2006 I was doing some circuit design for a garage research project and realized that the process might be useful. I contacted my supervisor from Watkins-Johnson and he told me that nothing further was ever done with the ammonium chloride die attach technique.

At this point I filed a patent application (11/625,345) which I eventually abandoned after restriction. The pending application (12/725,356) is a divisional of the abandoned application. I have avoided claiming the process as demonstrated over 25 years ago (i.e., in open air), but I have been ambivalent about prosecuting the patent application due to concerns about patentability related to diligence and the amount of time that has elapsed. The experiment was never recorded in writing by me, and to my knowledge never published by any of the handful of people that were aware of it.

I would very much like to hear the opinions of patent attorneys on this forum with regard to the patentability of above described process carried out in an enclosed chamber. Since I never performed the process in a chamber or discussed  performing it in a chamber, I am assuming that my past activities would not be a bar. There are a number of other claim limitations that were developed when I recently decided to file. My main concern is that of diligence, but since my employer did not want me to pursue the process development, is there a lack of diligence on my part if I fail to develop something on my own when it would be the property of Watkins-Johnson? Also, would Watkins-Johnson have rights in an invention based upon a process that they chose to ignore for 25 years? I believe that the die attach process has value, but on the other hand, I do not want to obtain a patent that I would not be entitled to. Thanks to those who have taken the time to read this.
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DogDayPM 9er9er9er

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Re: 25 year old invention ignored by employer
« Reply #1 on: 01-11-11 at 01:29 pm »

Bump, anyone?

I'll toss in a couple of quick thoughts and hopefully stimulate some discussion amongst those with better ideas on the topics you've raised. 

One is, I'm not sure that your prior use in and of itself impacts patentability even as to that exact (non-enclosed) process you actually employed back when - it may be that this would be viewed as a secret use.  So as potential "prior art", it may not mean anything vis-a-vis your more recently developed process.  You did mention diligence, but I think that may only apply in the circumstance where some intervening prior art did publish (in which case, 25 years from invention to application filing would be tough to explain in terms of diligence).  Or did you have another aspect of diligence in mind, and I missed it?

Something that also comes to mind but you haven't mentioned is, it may be that you need to provide a written description of the prior experiments, circumstances surrounding, etc. in an IDS in order to be said to have complied with rule 1.56?

Finally, whether your old employer has any rights in your new invention should likely depend on the relevant state laws.  Offhand, it would seem strange to me that an improvement invention thought up decades after leaving employment could be considered the property of the old employer, but then I'm not in the know re all 50 states' laws.  I have signed employment contracts myself as a scientist and engineer, based on two different states' laws, and to the best of my recollection the trailing obligation re inventions was 6 months or at most 12 months.
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JimIvey

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Re: 25 year old invention ignored by employer
« Reply #2 on: 01-11-11 at 03:54 pm »

Bump, anyone?

Sorry, no comment from me.  I read halfway through the second sentence before determining that I don't have time to sift through the entire post.

If I see a response that is mercifully brief and seems to beg for comment, I'll post one and it will likely miss important contextual details of the OP.  ;-)

Regards.
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mdm55

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Re: 25 year old invention ignored by employer
« Reply #3 on: 01-11-11 at 06:33 pm »



Something that also comes to mind but you haven't mentioned is, it may be that you need to provide a written description of the prior experiments, circumstances surrounding, etc. in an IDS in order to be said to have complied with rule 1.56?



Thanks for your reply. I plan on outlining the origins of the invention for the Examiner in a phone conversation and see what their take is on it. One way or the other, it should probably be on record. I was talking to Cree a couple of years ago about their microwave power FETs and I was surprised to learn that they are still using the same old heat-and-scrub eutectic gold/tin die attach process.
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ManOfManyBadIdeas

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Re: 25 year old invention ignored by employer
« Reply #4 on: 01-11-11 at 08:54 pm »

So, the gist of it (for JimIvey):
1. Invention is made 25 years ago while working for a private company.
2. Invention was not patented or further developed by the company.
3. 25 years later the inventor has come up with an improved invention, patentably distinct from what was done 25 years ago.

As was mentioned, diligence I think only applies if you plan to claim priority to some earlier date. If nothing of this sort has been patented/published in 25 years you are free to patent your invention made 25 years ago (if the company you worked for doesn't object that is). By the way, wouldn't claiming priority to 25 years ago mean applying for an expired patent? Not sure about that one. Anyway, the first thing would be to figure out how the company has handled the records/information with regards to your invention.

The sticky point in my view is the ownership of the invention. Since I am not an attorney, I only have a disjointed patchwork picture of things. It seems that the company you have worked for owns the invention you've made 25 years ago. It was mentioned here that the determining factor to patent ownership is contribution to the claims. It may very well be that since the current claims resemble the invention you've previously made while working for that company, your new invention may be viewed as partially made while working for your former company, and your former company may be entitled to partial ownership of the patent. What it means is that they might have an excuse to sue you if the invention becomes profitable.
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JimIvey

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Re: 25 year old invention ignored by employer
« Reply #5 on: 01-12-11 at 12:54 pm »

So, the gist of it (for JimIvey):
1. Invention is made 25 years ago while working for a private company.
2. Invention was not patented or further developed by the company.
3. 25 years later the inventor has come up with an improved invention, patentably distinct from what was done 25 years ago.

I don't see any ownership issues, though it could depend on the employment contract and state law.

I also don't see any patentability problems, assuming the legal conclusion of "patentably distinct" is accurate.

From a business perspective, it's important to note that competitors will be free to practice the 25-year-old technology.  So, the business would hang on the value of the new technology over the 25-year-old technology.

Regards.
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mdm55

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Re: 25 year old invention ignored by employer
« Reply #6 on: 01-12-11 at 05:26 pm »

I don't see any ownership issues, though it could depend on the employment contract and state law.

I also don't see any patentability problems, assuming the legal conclusion of "patentably distinct" is accurate.

From a business perspective, it's important to note that competitors will be free to practice the 25-year-old technology.  So, the business would hang on the value of the new technology over the 25-year-old technology.

Regards.

Thanks for your view on the issues.  I contacted Watkins-Johnson before filing the patent application and they were not able to provide a copy of my employment agreement. The company has been through several reorganizations and has also sold off various parts over the years. Although I can't claim the invention as carried out in open air, the health and safety of employees would be better served by using an enclosure, as I am claiming.

One reason I filed the application is that I did not want to regret not having filed it. Before becoming a patent agent, I received a patent (US5471785) on a pro se application. In 2005 a researcher contacted me about licensing the patent and we came to an agreement (http://www.radiocarb.com/patents/).

I am pleased that I stumbled onto this forum. I hope other independent inventors find it as well.


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ManOfManyBadIdeas

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Re: 25 year old invention ignored by employer
« Reply #7 on: 01-13-11 at 01:51 am »

I don't see any ownership issues, though it could depend on the employment contract and state law.

I also don't see any patentability problems, assuming the legal conclusion of "patentably distinct" is accurate.

Does it change anything if the filed patent, while not being anticipated, would be considered obvious in view of 25 year old technology and other art in the field?
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Kaitlin

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Re: 25 year old invention ignored by employer
« Reply #8 on: 01-13-11 at 09:50 am »

@mdm55
As a former litigator, I always cringe when I see internet posts give out real names and details in matters that have the potential to result in litigation. 

If there is any chance that how you proceed with this issue could result in litigation (whether re employment contract, divergent interests in any resultant patent, or whatever), you risk having your posts come back to haunt you in a bad way if you find yourself on opposite sides of the fence from your former employer or anyone else with a potential legal interest in the matter.

You are no doubt familiar with the Miranda warning in criminal law.  What you may not realize is that what you say can be used against you in civil matters as well.  If the other side in litigation learns of something you have said which can be twisted to appear to work against your interest in the litigation, it can be presented as evidence against you.  Furthermore, trial strategy can be affected by information revealed and your attorney's ability to keep information private under the attorney-client privilege is compromised. 

Remember that when you post anything on the internet, you cannot be sure who is in your audience.  It's not a private conversation but one conducted by megaphone in the equivalent of a world-wide town square. 

There is a "modify" feature you might want to use to go in and remove the identifying details from your posts -- both with respect to the initial post and  the later reference to your former employer's name, your patent (which shows your real name), etc. -- you could then use a plain-vanilla summation such as the one provided by ManOfManyBadIdeas to describe the situation without identifying who or what particular invention is involved. 

Good luck.
« Last Edit: 01-13-11 at 11:21 am by Kaitlin »
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JimIvey

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Re: 25 year old invention ignored by employer
« Reply #9 on: 01-13-11 at 01:39 pm »

I don't see any ownership issues, though it could depend on the employment contract and state law.

I also don't see any patentability problems, assuming the legal conclusion of "patentably distinct" is accurate.

Does it change anything if the filed patent, while not being anticipated, would be considered obvious in view of 25 year old technology and other art in the field?

"Patentably distinct" means sufficiently distinct to be patentable, and that implicitly means non-obvious over prior art.

So, yes, if the innovation were obvious, it would change things; it would be obvious and therefore not patentably distinct over the 25-year-old innovation.

Regards.
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ManOfManyBadIdeas

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Re: 25 year old invention ignored by employer
« Reply #10 on: 01-13-11 at 08:51 pm »

I don't see any ownership issues, though it could depend on the employment contract and state law.

I also don't see any patentability problems, assuming the legal conclusion of "patentably distinct" is accurate.

Does it change anything if the filed patent, while not being anticipated, would be considered obvious in view of 25 year old technology and other art in the field?

"Patentably distinct" means sufficiently distinct to be patentable, and that implicitly means non-obvious over prior art.

So, yes, if the innovation were obvious, it would change things; it would be obvious and therefore not patentably distinct over the 25-year-old innovation.

It's not exactly clear from the post if the new invention is obvious or not over the previous one (I am not a PHOSITA in that art), and my impression that it is hardly ever clear with improvement inventions anyway. So as a possibility, how do you think this would affect patentability and ownership of the new IP? Assuming the old invention is not considered to be in the public domain (practiced in secret).
« Last Edit: 01-13-11 at 08:53 pm by ManOfManyBadIdeas »
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khazzah

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Re: 25 year old invention ignored by employer
« Reply #11 on: 01-14-11 at 08:09 am »

Does it change anything if the filed patent, while not being anticipated, would be considered obvious in view of 25 year old technology and other art in the field?
So as a possibility, how do you think this would affect patentability and ownership of the new IP? Assuming the old invention is not considered to be in the public domain (practiced in secret).

Your questions are confusing to me.

You first stipulate that the "filed patent" would be obvious in view of old technology. Then you ask how this obviousness would affect patentability and ownership of the "new IP".

If "new IP" and "filed patent" refer to the same invention, then we all know that the stipulated obviousness would prevent a patent issuing. I don't see how the stipulated condition affects ownership, but it's irrelevant since there will be no patent due to obviousness.

If "new IP" and "filed patent" are instead two different things, please clarify.
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ManOfManyBadIdeas

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Re: 25 year old invention ignored by employer
« Reply #12 on: 01-14-11 at 09:03 pm »

Does it change anything if the filed patent, while not being anticipated, would be considered obvious in view of 25 year old technology and other art in the field?
So as a possibility, how do you think this would affect patentability and ownership of the new IP? Assuming the old invention is not considered to be in the public domain (practiced in secret).

Your questions are confusing to me.

You first stipulate that the "filed patent" would be obvious in view of old technology. Then you ask how this obviousness would affect patentability and ownership of the "new IP".

If "new IP" and "filed patent" refer to the same invention, then we all know that the stipulated obviousness would prevent a patent issuing. I don't see how the stipulated condition affects ownership, but it's irrelevant since there will be no patent due to obviousness.

If "new IP" and "filed patent" are instead two different things, please clarify.

They are the same thing. However, I am under the impression that the old technology cannot be used in a 103 rejection, since it is not the knowledge PHOSITA is expected to have(it has not been released into the public domain, and has been kept secret).
« Last Edit: 01-15-11 at 02:41 am by ManOfManyBadIdeas »
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khazzah

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Re: 25 year old invention ignored by employer
« Reply #13 on: 01-15-11 at 11:46 am »

I am under the impression that the old technology cannot be used in a 103 rejection, since it is not the knowledge PHOSITA is expected to have(it has not been released into the public domain, and has been kept secret).

Ah, you're right. I didn't read the thread carefully enough. OP did say:

I contacted my supervisor from Watkins-Johnson and he told me that nothing further was ever done with the ammonium chloride die attach technique.



So according to the facts we have, OP's invention was practiced where the invention took place, and is thus not prior art. OP's own patent application
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Isaac

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Re: 25 year old invention ignored by employer
« Reply #14 on: 01-20-11 at 01:06 pm »

So according to the facts we have, OP's invention was practiced where the invention took place, and is thus not prior art. OP's own patent application

I took the OP's story to say that the invention was not practiced.  If the old technology was actually exploited secretly to make a product, the old technology could be prior art.
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