[PLUG] Patents

Phil Tomson ptkwt at aracnet.com
Thu Nov 13 19:49:01 UTC 2003


On Thu, 13 Nov 2003, Steven D. Coffman wrote:

> I have a question if anyone is familiar with this subject:
> I am doing "contract work - no specifics" for a start up company.
> Another contractor and myself developed some Intellectual Property that
> the Start up wants to get the patent on as it is now their new direction
> (it's a Business Intelligence Software design).
> We know they must include our names on the patent as the Inventors, but
> the CEO also is adding his name (did none of the work), and wants us to
> sign it over to the company stating that the company "owns it". 
> We have only signed a non-disclosure agreement and nothing else. We have
> not been compensated for the invention. Do we have anything to stand on
> to just keep it in our names?

I'm not a lawyer and I don't play on on TV...

You're sure that the NDA didn't cover things you might come up with during 
the course of your work with the company?  I recall that the NDA I signed 
when I was contracting covered this issue.  You say you haven't been 
compensated for the invention, but have you been compensated at all for 
any of the contract work?  That may be an issue.  Of course if they don't 
pay you they would be violating the contract and maybe that means you can 
tear up your side of it too.

BTW: I heard recently (from an IP Lawyer) that the law in Washington and 
California limits what ideas companies can claim from their employees.  
In Oregon we apparently don't have that protection - here they can draw up 
sweeping employment contracts where they can claim the idea you had while 
in the shower this morning.  So, if the company you're working for is in 
Washington (or perhaps if you live in Washington) you might have more 
leverage than you would if it's in OR (especially if you can show that you 
came up with the idea at home and not on the company's premises.)

<digression>I sometimes wonder what it would be like if patents were only 
issued to people, not companies.  You come up with the idea and your name 
is on the patent and it 'travel's with you even if you go to a different 
company... Wouldn't that be interesting.  After all, it's 
supposely 'intellectual property' - the product of someone's intellect.  
When you think of it this way, how can a corporation have intellectual property?
</digression>

Phil





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