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Author Topic: Obligation to appear in court after quitting?  (Read 2022 times)


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Obligation to appear in court after quitting?
« on: 10-27-17 at 05:28 am »

I have given some contributions related to patent in my company. 
Now my boss told me that if I want to be listed as one of inventor, I have to sign a document (not assignment) which saying I promise
I will appear in court when this patent is under litigation in the future, even I quit this job I still have this obligation.

Is this normal in U.S patent?
Inventor usually appear in court even they have already quitted? :'(

I want to reject my boss this request but I don't know how to,
is there somebody can help me?   


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Re: Obligation to appear in court after quitting?
« Reply #1 on: 10-27-17 at 08:38 am »

"Inventor" is defined by law and the company cannot just pick and choose who it would like to name. Failure to correctly name the proper inventors can even lead to the claims being invalid, though it can also usually be corrected later. So they don't really have a basis to withhold naming you as an inventor.

But, they can likely hold this over you in other ways. If this was part of your employment contract and you aren't following it they can certainly hold this against you. And if you are in the US they can fire you for almost any reason or even no reason if you are an at will employee.

I have no opinion on whether this is normal or a good idea for you to do or fight. This isn't legal advice.
I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.


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Re: Obligation to appear in court after quitting?
« Reply #2 on: 10-27-17 at 12:47 pm »

I have never seen an "obligation to appear in court," but make sure that if you do sign it, there is some compensation included.

What I have seen is an obligation to assist with the prosecution of the patent application, if needed.  I did have to work with an inventor (drafting a declaration to overcome a rejection) who had moved to another company, but it was a very cordial experience.  He told me that he was paid hourly by his old company for any time he worked assisting us with prosecution.  That sounds reasonable.
This comment: does not represent the opinion or position of the PTO or any law firm; is not legal advice; and represents only a few quick thoughts from the author, not a well-researched treatise.  Seek out the advice of a competent patent attorney for answers to specific questions you may have.

Robert K S

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Re: Obligation to appear in court after quitting?
« Reply #3 on: 10-27-17 at 12:54 pm »

I believe that an obligation to reasonably cooperate in obtaining and defending patents is a pretty standard part of employment contracts for inventors.  Here is an example of essentially the same question being asked and answered.

It goes without saying that no company should or lawfully can an employee or former employee to lie, e.g., to sign something saying he/she invented something that he/she didn't, or to commit perjury in defense of a patent, nor should any inventor (or non-inventor, as the case may be) ever do these things.

However, if someone wants a vital witness in a witness chair in court, there usually aren't any ways to get around that.  If the witness does not show up voluntarily, he or she can be subpoenaed.

If you have any questions regarding any contract you are asked to sign, you should consult an attorney.  It should be your own attorney, not one who represents the company.
This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.


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