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[Adam Schwartz]

Hello all,

After receiving some info from my previous post, a new question has arose that someone might be able to  answer:

Lets say my friend and I have an idea: he is required to give it up to his company, but I am not required to give it to mine.

Can his company claim it even though I am co-inventor and I'm not under contract with them?

If they can not, how can I persue the idea being that I can't patent it because my friend is under contract, and he is a co-inventor who i must list on the patent?

Thanks!!

Adam

[Bill Richards]

Yes.
If, indeed, you are both inventors, and the other person must assign his rights to his company and you do not, the other company will have ownership rights in any patent that issues to you and the other person jointly.  As joint owner, the company will have all the rights that you do to practice and/or license the technology.  The only difference, not necessary right now, is in litigation.
Even if you decide to not patent your invention, depending upon his employment agreement, his company may have rights in the technology anyway.

[Adam Schwartz]

I am rather certain that my co-inventors company would have interest in this technology. That being said, it seems that his employee agreement is definitely going to give control of the idea to the company.

Is there any way to keep this idea ours? I can't patent it myself as that would be fraud.

Also, is there a way that we could somehow bargain with the company to say: we will give you this idea, and if you decide to take it, you hire my coinventor and let us work for the company on the project? Maybe pitch it under an NDA?

Again, thanks for the responses,

Adam

[Isaac]

Also, is there a way that we could somehow bargain with the company to say: we will give you this idea, and if you decide to take it, you hire my coinventor and let us work for the company on the project? Maybe pitch it under an NDA?

Based on your description what you have to bargain with is your part ownership in the invention.   It is possible that the company would be interested in acquiring 100% ownership.  Whether or not the other company is willing to accept your terms in return for that interest is hard to say.

I would not expect an NDA covering an invention in which the company has part ownership already to be effective, but maybe the laws in your state are stranger than I would expect.

[Adam Schwartz]

Thank you Isaac,

However, if the company already has part ownership, then we really have nothing to bargain with, do we? Aside of the fact that can refuse to tell them about the idea in the first place, but then that doesn't help us either.

Also, how can we claim part ownership if it is illegal for us to persue a patent as my co-inventor must sign the idea over to the company anyways?

Thanks,

Adam

[Isaac]

Thank you Isaac,

However, if the company already has part ownership, then we really have nothing to bargain with, do we? Aside of the fact that can refuse to tell them about the idea in the first place, but then that doesn't help us either.

Not quite correct.  A company with only part ownership can use the invention without being sued by the co-owner, but cannot sue or exclude others or offer an exclusive license without the cooperation of the co-owner.   To the extent that the company desires those rights you have something to bargain with.

Also, how can we claim part ownership if it is illegal for us to persue a patent as my co-inventor must sign the idea over to the company anyways?

The co-inventor is required to assign *his* share of the invention to the company.   That may or may not mean that you cannot file a patent application.  If it is legal for you to file an application it may or may not be advisable for you to do so.   Making those determinations would require specific legal advice based on the details of your particular situation.

[Adam Schwartz]

"To the extent that the company desires those rights you have something to bargain with."

Sorry if I seem to be missing something here, try and bear with me:

I understand now what you mean by the company wanting 100%, that way they can do as they wish. Now, If my friend and I approach his company with this idea, as you say I have partial ownership of the idea. What do I need to do to "prove" that partial owernship to them when we approach the company?

Also, it seems in their interest to secure 100% rights to the idea, rather than be troubled my my interests which may not fit with theirs: Would they potentially be looking for me to sign a document forking over my partial ownership to them? I assume that is where you mean i have barganing power: If they want my rights, I suggest what i want in exchange.

Again, thank you

Adam

[Bill Richards]

First, you do not have "partial" ownership.  You (assuming you're both inventors) are co-owners.  Each has full rights to the entire invention.
Proof of being a co-inventor involves good records, properly maintained, preferably contemporaneous with the work, and, ideally, witnessed by a disinterested third party.  It's an evidentiary issue that revolves around credibility of the inventor(s).  There are lots and lots of court cases that cost the litigants hundreds of thousands of dollars to decide inventorship.  It's seldom black and white and generally very complex.  It would take a review of the evidence to tell for sure.

[Hear hear]

it all comes down to this with a joint ownership.

Unless there is a signed agreement. Each owner will own an equal share of the patent.

Each owner can exploit the patent, sell rights, etc of that patent to any other entity without the consent of the of other owners of the patent.

Therefore I recommended you have a talk to the business in doing a signed agreement. That ensures a agreement from atleast 51% of owership. Any returns, upkeep fees are to be payed equally by all owners.

[Bill Richards]

Unless there is a signed agreement. Each owner will own an equal share of the patent.

Not true.  Hired-to-invent is "firmly grounded in the principles of contract law".  See, e.g., Banks v. Unisys, 00-1030 (Fed. Cir. 2000).

[Hea Hear]

I am not disputing the fact the if your working for a business under a contract to produce software.

But the fact remains he was working jointly with another person who is not related to the company.

here is a little excerpt.

****************
An invention's patent is considered personal property. Under patent law, each co-inventor named on a patent application owns that property. In the absence of any agreement, each co-inventor owns 100 percent of the patent, regardless of how much each individual contributed to the invention. Patent law gives co-owners of a patent the right to make, use, license, sell and import the patented invention within the United States in whatever way they please, without the consent of the other co-owners.

Joint ownership of a patent occurs simply by applying for a patent with other people. Co-inventors don't need to work together or at the same time on an invention. Nor is it necessary that they each make the same type or amount of contribution. Each co-inventor must simply contribute, in some manner, to the development of the idea of the invention.
**********************
I'm not sure of the implications of such a thing.. but unless the idea came from your friend, and unrelated to your line of work. I guess this means this is not close to any projects you have been currently assigned.

You may be liable for disclosing information of a confidential nature to another party ie your friend. Otherwise how on earth could your friend have contributed without knowing what to contribute???

[Bill Richards]

But the fact remains he was working jointly with another person who is not related to the company.

Not relevant for the person who does work for the company.  The issue is the relationship between one of the possible inventors and his employer.

An invention's patent is considered personal property. Under patent law, each co-inventor named on a patent application owns that property. In the absence of any agreement, each co-inventor owns 100 percent of the patent, regardless of how much each individual contributed to the invention. Patent law gives co-owners of a patent the right to make, use, license, sell and import the patented invention within the United States in whatever way they please, without the consent of the other co-owners.

Joint ownership of a patent occurs simply by applying for a patent with other people. Co-inventors don't need to work together or at the same time on an invention. Nor is it necessary that they each make the same type or amount of contribution. Each co-inventor must simply contribute, in some manner, to the development of the idea of the invention.
**********************
I'm not sure of the implications of such a thing.. but unless the idea came from your friend, and unrelated to your line of work. I guess this means this is not close to any projects you have been currently assigned.

True in general, but, see Banks:  "The general rule is that an individual owns the patent rights . . . .  There are two exceptions to this rule: . . . where the employee is hired to invent something to solve a particular problem . . . ."
My point is that without specific facts (which should not be posted here) it's not possible to give an opinion.  Generalities are fine, but where exceptions exist, care must be taken.

[Hear Hear]

lol...


k lol... Ok we are all agreeded that there are two parties that are likely to have rights to the invention

1) The company
2) His friend.


I didnt seem to make it clear.. but that was my intention since my first posting..

There..

[Rajeev_Madnawat]

I don't see it that way. "Hired to invent" does not automatically cover "all inventions" by the inventor employee.

Quote:

"The general rule is that an individual owns the patent rights to the subject matter of which he is an inventor, even though he conceived it or reduced it to practice in the course of his employment. There are two exceptions to this rule: first, an employer owns an employee's invention if the employee is a party to an express contract to that effect; second, where an employee is hired to invent something or solve a particular problem, the property of the invention related to this effort may belong to the employer. Both exceptions are firmly grounded in the principles of contract law that allow parties to freely structure their transactions and obtain the benefit of any bargains reached."

Pay attention to the language -
"where an employee is hired to invent something or solve a particular problem, the property of the invention related to this effort may belong to the employer"

Not true.  Hired-to-invent is "firmly grounded in the principles of contract law".  See, e.g., Banks v. Unisys, 00-1030 (Fed. Cir. 2000).

[kennethc]

how about file until your wife name ?