What if you like to invent but your company wants to own all your IPs?

[cdev]

You need to get help. Maybe you can find a law clinic.. But check their work. Dont trust what people tell you.

Databases like Google Scholar (case law and journal articles) and Hein Online might be helpful..

[BrianHG]

I guess another option is to file the provisional patent on any ideas I have now before I start working there. Even if the employment agreement wants to own everything, it cannot pertain to anything prior to my starting date right?

Thanks

Careful, in the US, when filing a Provisional, and you started work before it is a fully granted application (you'll need to wait years before working at your employer)

I've never heard of anything like this. Can you provide a link or more info? So they are going to ask me if I have any provisionals and if I say yes then they'll tell me I can't work there? That's scary

And I won't have this problem if I filed a regular utility patent?

Thanks

Yes.  It's is important to understand what a 'Provisional' patent is, it's up side and down side as my third patent was a provisional.

A 'Provisional' patent gives you the filing date as the date of your core idea and claims being yours.  The meaning of the 'Provisional' means you get 1 year to make amendment/additions to your patent text.  As long as your additions don't alter your core idea, and you are not adding any new concepts to your patent, the examiner will allow the additions.  After 1 year, you can no longer make any changes to your patent and it will continue through examination.  Those who choose this route are after the earliest possible filing date, then having 1 year for a chance to finish designing the details of their idea if they come up with any.  This also gives them a chance to pay part of the patent fees at filing, then the rest later-on (Now obsolete if you choose the cheaper micro-entity filing option.).

The problem with the 'Provisional' is if you file, now get employed before that first year of allowable changes ends, your employer may claim that your employment work for them taught you whether or not you should have made changes to your patent text during this 1 year 'Provisional' period.  This is a technical hole where you can potentially get screwed through...

If you are worried about this 'hole' a provisional keeps open for 1 year, file a normal patent.  If you are worried about the price, note after 1 year, the additional processing fees for the provisional patent comes out to the same as filing a normal patent right at the beginning.  If you are trying to save money, google 'USPTO micro-entity patent rules'.  You will save more immediately than even filing a provisional, though there are and extra 2 forms to fill out.  The total savings for the micro-entity is 75% the normal patent cost as long as you stay below 21 claims, 4 of which may be independent and are patenting 1 invention.  Keeping within these claim #s, you can request 'accelerated' examination as I have on my most recent patent which means you can get you patent granted within a year.  (This may be useful if you are planning to sell the patent ASAP, or get third party investment ASAP)  This might not be important to you if all you want is that 'filing date' of your idea and you are planning to make your own money over a few years to finance your idea yourself, establishing that date in stone when the US PTO first receives your patent application making all of that invention yours prior to employment.  You are not obligated to tell your employer that you applied for a patent and if they find out, you are under no obligation to describe any of it to them.  If you do, your patent will be nullified if contested in court under the guise that you did not believe you invention was a valuable enough idea to keep it a secret until it is patented.  If you get a notice of allowance from the USPTO, (means they send you a date which your patent will be granted) and your employer begins to design something similar, now, don't tell your employer yet, but seek an IP lawer's advice first.  Things will get messy, but, judging by your description of your employer, things could become lucrative.  (Note I've been through a buyout, it is hell, frustrating and stressful beyond belief when dealing with a party who has unlimited financial and legal resources.  It can drive you to the brink and if you don't do everything perfectly, your gonna go through hell.)

I don't know your budget, but if you are trying to save, write your patent as best you can, then I would recommend seeking a patent agent, or attorney to go over your work and verify your text to make sure you aren't missing anything or leaving any gaping holes.

Best of luck, google is your friend here & you can search existing patents on google since you need to provide similar inventions patent #s close to yours as part of your submition to show you've done due diligence.  If you haven't gone this far, you may be throwing out time and money...
EG: google 'Method for eliminating 3d cross images patent'
or google '3d line muting patent'

Best of luck.

[amirm]

One practical note for someone who has been on the other side of this: employers of major companies as a rule, will NOT want to go after employees.  Can you imagine how bad it looks for GE to go and sue an employee for building something on their own after hours?  The negative press will be terrible.  And of course there is huge cost to getting into litigation from time and effort point of view even if the budget is unlimited.  In many case I have let things go for this reason even when the offense was quite serious.

The exceptions are when things get emotional or big deal such as going to work for direct competitor and potentially having taken information with you that you shouldn't have.  Then the book may be thrown at you.

Best advice I ever got from an attorney with respect to litigation was, "don't look like a thief in front of a judge."  Leave on good terms and good intentions and you won't have to worry. As such, I am very doubtful that any fortune 500 company will go after an employee for IP developed on their own time and material regardless of what the written agreement says.  This is on top of many states where the judges err on the side of protecting employees over employers.

So while as I mentioned you should consult with an attorney, and ask for changes if you can, the above rule should put your mind at ease as a general matter. 

[phil from seattle]

With respect to OP, an attorney can give best advice as to general attitude of the judges in your state/country with respect to such enforcements.  30 minute conversation won't cost you much and give you peace of mind.

Yeah, I'll probably speak with an attorney. I'm a fresh grad finishing up school and I accepted an offer, with a starting date in January. I can't just not take the job, because I really want to work at this company. They gave me a great offer.

The company is huge, it's in the Dow 30. Some of you mentioned asking them to change the clause or make minor modifications to it. Is it even likely that a big company with all that bureaucracy will agree to something like that? I think this is easier with a small company.

I guess another option is to file the provisional patent on any ideas I have now before I start working there. Even if the employment agreement wants to own everything, it cannot pertain to anything prior to my starting date right?

Thanks

Do you understand the time and costs involved in filing a patent? 10 years ago it was $30-35K and 4 to 5 years to issue. Doubt it's gotten better. Also, most patents are pretty easy to work around - thus reducing the value of a single patent. And, you will need to spend time and money to defend your patent - bring money, guns and lawyers. You need to be absolutely certain that you have a world class idea and write a patent that locks down any possible workarounds.  If it is in the scope of the job offer, then you need to discuss it with the company up-front. My guess is your great offer came about because of your expertise in that area.  It's murky - as other have said, talk to an attorney.

[cdev]

If you live anywhere near Palo Alto, CA, at least several years ago, (I'm pretty sure it was PA but there is a chance it was another SV municipality - Mtn View, Sunnyvale...etc. or Stanford Unive. )  they had and perhaps still have a municipal resource-they basically have a center for people to do patent research on their own, with all sorts of database subscriptions. It's walk in.

Also there is a branch of the USPTO in San Jose where people can get walk in help.

I think you should do that and make sure you are on the record as having gotten their help.

Its entirely likely the company that wants your help is 100% legit but you should document your own ideas and apply for your own patent just so your work up to his point is documented. Its absolutely essential to do that. Also I would not sign any waivers of your rights in your already existing inventions. Just cross that part out.

 

[BrianHG]

Do you understand the time and costs involved in filing a patent? 10 years ago it was $30-35K and 4 to 5 years to issue. Doubt it's gotten better.

This has improved drastically since the USPTO now offers the 'file as a micro entity' deal for those with low income, have less than 5 existing patents and are filing privately.  Again, repeat from my above post: google 'USPTO micro-entity patent rules'.  The program came about in 2013, so it's new.  I already received my letter of acceptance for a patent issued 6 months ago staying within the rules and it will be accepted in the new year.

Also, most patents are pretty easy to work around - thus reducing the value of a single patent. And, you will need to spend time and money to defend your patent - bring money, guns and lawyers.

Yes, this takes a hell of a lot of money.  You are not prepared to go down this route if you are seeking mere employment.  The only use for your patent here is either to sell/license, or, if you have access, to get investment with those who have the deep pockets and legal backbone who will support you.

You need to be absolutely certain that you have a world class idea and write a patent that locks down any possible workarounds.

Yes, the vast majority of patents do nothing, make no money and just site there.  It's takes more than just having a good unique idea to succeed here.
To cover the workarounds, unlike my earlier patents, which I sold (it's what paying for the new one...), my current one is over 120 pages long.  It is that good of an idea, and I wanted to cover all the work arounds.  Even though my filing fees were cheap because of the new 'micro-entity' filing feature, I had professional help with the text and claims, so, it still came to 30k$, and now, before the US does the final grant, I'm spending another 15K for a PCT filing which gives me a 2.5 year window to file in other countries which costs even more, I'm looking at around an additional 100K$ to get the countries I want.  Be aware I have experience with my 3 prior patents and have an avenue for either investment or sale of this patent.

Like I said earlier, use google.  You can search US patents there, they are complete and you can also search on the USPTO website.  As I said, do your due diligence.  Completely read other patents in the same field as your invention.  Verify who wrote them, who owns them.  Do you understand when I say in my previous post that you make a set of claims in your patent & you can have multiple claims, some in independent form.  Even my latest patent took me 6 months to write and gone over with my patent agent making sure every single word, position of each sentence, figures and illustrations, and in the claims section, every comma, semicolon, hyphen and indentation COUNTS.......... + I've done searches of existing patents to check for prior art and list citations in my current patent to cover every angle possible and make sure no one can work around my core idea, and be sure, they cant.  But to achieve this, I was doing nothing but editing text, testing, and illustrations for 6 months to make my first really big $$$ patent.

(This one is in a class way above my older 3 from 15 years ago, if you haven't figured it out, the 2 google search examples I posted would show you 2 of mine which I sold.)

  If it is in the scope of the job offer, then you need to discuss it with the company up-front. My guess is your great offer came about because of your expertise in that area.  It's murky - as other have said, talk to an attorney.

This can get ugly....  No matter what, keep your idea a secret.  You may only tell your full idea under trust to an attorney you are seeking help from if he requires that much specific information from you.

[engineheat]

The problem with the 'Provisional' is if you file, now get employed before that first year of allowable changes ends, your employer may claim that your employment work for them taught you whether or not you should have made changes to your patent text during this 1 year 'Provisional' period.  This is a technical hole where you can potentially get screwed through...

I am going to be as complete as I can with my provisional application, and include as many embodiment as possible. The specs and drawings will be done to the best of my ability, and then I will have a lawyer file it. I'm actually taking a legal course geared toward engineers in my school now and the professor has a law firm. I plan to just use his help.

I don't plan on adding anything or making significant modifications after the provisional. The point of filing a provisional is to buy me 1 year worth of time to test the market, and also getting that early filing date before my employment, without having to spend tons of money right away. I don't think there would be many "technical holes" if I don't make modifications if I file an utility patent later.

I also want to try crowdfunding to get money for filing the utility patent (something like Kickstarters). I feel nowadays with social media, crowdfunding is a great way to build buzz while alleviating some financial risk. So I guess the most important thing right now is to make my provisional as ironclad as possible?

Thanks

[cdev]

Don't delay

[BrianHG]

The problem with the 'Provisional' is if you file, now get employed before that first year of allowable changes ends, your employer may claim that your employment work for them taught you whether or not you should have made changes to your patent text during this 1 year 'Provisional' period.  This is a technical hole where you can potentially get screwed through...

I am going to be as complete as I can with my provisional application, and include as many embodiment as possible. The specs and drawings will be done to the best of my ability, and then I will have a lawyer file it. I'm actually taking a legal course geared toward engineers in my school now and the professor has a law firm. I plan to just use his help.

If all you have read so far hasn't slowed you down, +1 on 'cdev's don't delay...
As for the 'Provisional'.  There is no difference between a utility patent and 'provisional' patent except for that 1 year of allowable change.  If you don't plan to make changes and want to secure that hole, when asking your patent attorney/agent, they will give a similar recommendation as I.

However, if he doesn't mention it, ask about filing as a 'Micro-entity'.  This still makes a normal utility patent, but, if your income is less than (I think) 70k$us/year, you will save a lot of money and potentially get the patent 'issued/granted' within 1 year instead of 3-4 years.  Your only limitation is you can only be describing 1 invention in your patent, not 2 or 3.  Example, you may patent an electronic apparatus, or a software algorithm, or a chemical formula, or a new game, but not all 4 together.  But the full patent price well under 1k$ is a bargain compared to above 5k$.  (you will need to double check pricing...  This doesn't include patent search or attorney fees, as a US citizen, you may be paying less than I as a foreign patent applicant.)

Quote from USPTO's website:

The cost of filing a nonprovisional patent application usually includes three components: the basic filing fee, the search fee, and the examination fee. Currently, this totals $533 if you file electronically or $630 for a paper filing. If you file by paper, there is an additional $200 surcharge. Under the new fees, a small entity will pay $800 for filing a nonprovisional utility application while a micro entity will pay half that at just $400. These prices will remain until they are adjusted by the USPTO.

US Citizen fees:
https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

I don't plan on adding anything or making significant modifications after the provisional. The point of filing a provisional is to buy me 1 year worth of time to test the market, and also getting that early filing date before my employment, without having to spend tons of money right away. I don't think there would be many "technical holes" if I don't make modifications if I file an utility patent later.

It is not whether you choose to make additions or not when filing your provisional.  It is that your employer may claim that during this 1 year allowable change period, they may say what you have learned from their employment prevented you from making any changes to your patent when otherwise, you may have done so.  Again, a murky situation which most likely wont happen.  But filing a basic utility patent instead, you closed this loophole.  Again, ask your attorney how worried you should be about this if at all.

I also want to try crowdfunding to get money for filing the utility patent (something like Kickstarters). I feel nowadays with social media, crowdfunding is a great way to build buzz while alleviating some financial risk. So I guess the most important thing right now is to make my provisional as ironclad as possible?

Thanks

YOU CANNOT get a patent on an idea that others know about, or that you have told anyone about.  That is the rule.  And with a 400$ micro entity electronic filing fee, if you are having trouble paying that, plus there is a closing fee later-on if granted, around 200$, I'm not sure Kickstarter will make it for you.  Kickstarter is for when you have a proven design and are ready to go into production within a few months after a 1-2 month funding campaign.

[engineheat]

YOU CANNOT get a patent on an idea that others know about, or that you have told anyone about.  That is the rule.  And with a 400$ micro entity electronic filing fee, if you are having trouble paying that, plus there is a closing fee later-on if granted, around 200$, I'm not sure Kickstarter will make it for you.  Kickstarter is for when you have a proven design and are ready to go into production within a few months after a 1-2 month funding campaign.

What I meant was, I would file a provisional patent application, then run a crowdfunding campaign, then use that money to file an utility patent within 1 year of my provisional application. So even though I've publicly disclosed the idea through crowdfunding, I can take advantage of my earlier filing date due to provisional patent. Is this okay? Again, assume my provisional patent is of high quality (full disclosure, etc...) and I do not make any changes in the 1 year period.

The micro-entity sounds interesting. But is it only limited to US citizens? I'm a permanent resident.

So I talked to a lawyer today, he is actually a law professor at my university. He gave me a quote for the provisional patent, and it's a bit more expensive than I thought. Roughly $2500 which is a lot of money for a student. So I wonder if there are other ways I can protect my idea from the (unseen) employment agreement aside from filing an utility patent or provisional patent prior to the start date of employment? Would it suffice to fully disclose my invention to a mentor of mine (through email or other 'written form') while having him sign a non-disclosure agreement? This way, I have not made any public disclosure, so I do not lose my right to a patent filing later. Yet at the same time, I have proof that my idea was fully conceived prior to my employment so when I file for a patent later during employment, my employer cannot argue that I had the idea during employment. This would allow me to delay shelling out major $$$ for an utility or provisional patent prior to employment. (My hunch says this approach has too much drawback and potential pitfalls, but I had to ask to make an informed decision)

If the above approach is not viable, then I would have no choice but to file a provisional patent with a lawyer prior to my employment, and I would get on it right away. Either way, I'm totally committed to getting my idea protected because I've spent a lot of effort on it.

Thanks

[engineheat]

Finally saw the clause regarding IPs, here it is:

"By accepting employment with XYZ, you agree that XYZ is entitled to all rights, including the right to claim priority, in any intellectual property that you create during your employment with XYZ which relates to XYZ’s business or which was created using XYZ resources. Such intellectual property includes all types of technical, artistic, or commercial creative work, in whatever form it may exist or may have existed. XYZ is also entitled to receive a prompt and full disclosure of such intellectual property, to apply for protection of such intellectual property that it deems appropriate, and your complete cooperation in executing papers necessary for establishing, maintaining, and protecting the intellectual property and for establishing the employer’s ownership thereof."
--------------------------------

I think the agreement includes things done outside of work hours too.

Anyway, Like I said I have an idea that is related to the company's business. It's done during this semester (just graduated). If I file a provisional patent prior to employment with them, will I still own it if I follow up with an utility patent later? The iffy part is that my filing date will be prior to employment, but my potential issuance or publication date will be during employment.

I guess if I write my provisional very detailed and comprehensively, and that my utility patent adds no new information, I might be okay? I have scheduled meetings with lawyers this week to discuss this. But it's nice to hear what you guys think, not asking for legal advice. There are lots of smart and knowledgeable folks on here and it never hurts to hear different perspectives.

thanks

[kaz911]

Did the US patent system not change from First to Invent - to first to file? So it used to be the first who could prove they had the idea - could kick out other patents for same. But Obama changed that to "First to File" - so now prior art does not matter as much as who files first?

That is why engineering notebooks with pen and paper was always around. Write idea, date, document - for potential future patents. Now it is "Get an idea - call lawyer!".

[james_s]

My Altium contract was a doozy. It said in no uncertain terms that everything you invented PRIOR to working at Altium became the property of Altium! unless you declared in writing detailing all previous projects and ideas you wanted to claim. I gave them a 13 page report listing every project and idea I had, and they were stunned, no one had ever gave them a list before. They signed it.

That's where I draw a hard line. I don't *like* the idea that a company could claim something I came up with on my own time during my employment but I can almost see where that comes from. I've certainly encountered people who spent a good deal of their employer's time working on some personal project that they then left and profited from. Trying to claim everything I've done prior to my employment though? Hell no, that should flat out be illegal to even request.

[ataradov]

so now prior art does not matter as much as who files first?

First to invent or first to file has noting to do with prior art. If there is a publicly available prior art, you can't file for a patent under any system. First to file makes it easier to resolve conflicts, since filing date is a concrete thing printed on a piece of paper, and invention date is flexible.

[BrianHG]

The micro-entity sounds interesting. But is it only limited to US citizens? I'm a permanent resident.

Yes you can claim micro entity.  You do not need to be a US citizen.  I as a Canadian in Canada used it.  All it means is that you are privately filing your own invention, not as a company, and you can prove that your annual income is less than 80k$ us. (You need to double check this $$ figure.)

If you are making more than 80k$, you will be upgraded to 'small entity' and additional charges of at least 1k$.

Check the us PTO web site fees and google instructions on filing a US patent privately for the lowest possible cost.

You can apply for a patent, which you can now call your invention 'patent pending' and immediately start a kickstarter fund and build and sell immediately.  Others may steal your idea in the mean time until your patent is awarded.  There are some caveats here as well which you may want to discuss with your teacher.  Also, take a copy of all the info I gave you here on you topic and go over what I said with your teacher as I provided some golden valuable info.

[engineheat]

any idea on how my provisional patent might get affected by that employment agreement? Technically I've "created" the intellectual property before employment, since intellectual property is an idea. That's different from the "right" to it, which is a patent. I don't think it matters if the formal patent gets issued during employment. But that's just me.

[engineheat]

So I consulted with a couple of lawyers and it seems anything I include in my provisional patent would be mine, as long as it is documented prior to employment, which the provisional patent obviously does.

But even if legally I'm okay, I wonder if the company will hate me if I later disclose it to them and want to license it/or partner with them and they realized they I filed it before started working and they can't claim it. And decides to terminate me.

[Mr. Scram]

So I consulted with a couple of lawyers and it seems anything I include in my provisional patent would be mine, as long as it is documented prior to employment, which the provisional patent obviously does.

But even if legally I'm okay, I wonder if the company will hate me if I later disclose it to them and want to license it/or partner with them and they realized they I filed it before started working and they can't claim it. And decides to terminate me.

If they hate you for this, it's time to move on anyway. They can't claim anything and everything you did prior to employment.

[cdev]

Whatever you think get that application filed.

So I consulted with a couple of lawyers and it seems anything I include in my provisional patent would be mine, as long as it is documented prior to employment, which the provisional patent obviously does.

But even if legally I'm okay, I wonder if the company will hate me if I later disclose it to them and want to license it/or partner with them and they realized they I filed it before started working and they can't claim it. And decides to terminate me.

[Zero999]

How about putting a third party's name (obviously someone you trust with your life, such as a spouse, a very close family member or friend) on the patent application?

That way the patent is theirs, even if you had the idea, or is that not allowed? You could even buy the patent off them.

Would it be necessary to prove the idea is theirs? I suppose it's easier to make that claim, if they have a qualification in a similar field.

[tggzzz]

How about putting a third party's name (obviously someone you trust with your life, such as a spouse, a very close family member or friend) on the patent application?

Better to keep the inventor's name on the patent, but to state the "assignee" is some other legal entity such as a company owned by the inventor.

Alternatively, if the inventor merely wants to prevent other people from stopping them using the invention, publish the invention. Of course, the inventor cannot then get a patent on the idea and extract royalties from other parties, but that is notoriously difficult anyway! Canonical example: https://www.damninteresting.com/the-tragic-birth-of-fm-radio/

[Mr. Scram]

Better to keep the inventor's name on the patent, but to state the "assignee" is some other legal entity such as a company owned by the inventor.

Alternatively, if the inventor merely wants to prevent other people from stopping them using the invention, publish the invention. Of course, the inventor cannot then get a patent on the idea and extract royalties from other parties, but that is notoriously difficult anyway! Canonical example: https://www.damninteresting.com/the-tragic-birth-of-fm-radio/

That story is a fine yet tragic example how having patents is as much about the deep pockets you need to defend them as it is a about actually having them, if not more. Just getting a patent is worthless, and the worst case scenario is that you'll be run into the ground for having it to eliminate you as competition.

People fail to understand that patents today mainly serve the larger corporations, who can file them endlessly, defend them until the death and buy any fledgling company that comes up with any interesting new technology. This makes it almost impossible to break into certain markets, like telecom, even with a few patents in hand. This is why a lot of people have been pleading for a revision of the patent system, but obviously there's a strong lobby against that. "Think of the jobs!"

[tggzzz]

Better to keep the inventor's name on the patent, but to state the "assignee" is some other legal entity such as a company owned by the inventor.

Alternatively, if the inventor merely wants to prevent other people from stopping them using the invention, publish the invention. Of course, the inventor cannot then get a patent on the idea and extract royalties from other parties, but that is notoriously difficult anyway! Canonical example: https://www.damninteresting.com/the-tragic-birth-of-fm-radio/

That story is a fine yet tragic example how having patents is as much about the deep pockets you need to defend them as it is a about actually having them, if not more. Just getting a patent is worthless, and the worst case scenario is that you'll be run into the ground for having it to eliminate you as competition.

People fail to understand that patents today mainly serve the larger corporations, who can file them endlessly, defend them until the death and buy any fledgling company that comes up with any interesting new technology. This makes it almost impossible to break into certain markets, like telecom, even with a few patents in hand. This is why a lot of people have been pleading for a revision of the patent system, but obviously there's a strong lobby against that. "Think of the jobs!"

A major use of patents in large companies is to trade them with other large companies; "we won't sue you and you won't sue us". As with the old rag trade saying, "never mind the quality, feel the width".

[Zero999]

I agree that patents are a waste of time and money, along with most IP nonsense. I make my ideas public domain, unless it's something I've done for my employer.

[tggzzz]

I agree that patents are a waste of time and money, along with most IP nonsense. I make my ideas public domain, unless it's something I've done for my employer.

No, they aren't a waste of time, but their applicability is often misunderstood. For example, it is worth remembering that the were invented in order to spread knowledge skills and products.