[PLUG] Re: Patents

[Keith Lofstrom]

S.C. writes:
> 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 am leaving your name off of this, and I would suggest you discuss
this under a pseudonym.  Every employer you hope to have from now on
will have a search engine, and your mail to this group is on the web
forever.  Yes, being careful about public statements sucks.  But dissing
your current employers or the expectations they share with many future
employers is a career limiting move.  Be very careful.  Freedom of speech
means you can say damned near anything you want, without getting beaten
or jailed.  Freedom does NOT exempt you from consequences.

That said;

I have my name on 7 patents.  One made a trickle of money, the rest
prevent me (and almost everyone else) from ever developing my own
inventions further;  I don't work at those places anymore.  

Patents are typically worthless.  A very small fraction actually make
money for the patent holder.  If you want to fight this thing, be
prepared for a lot of grief with a small chance of reward.  

That said, if you signed an NDA then you are stuck - the idea that you
developed on your client's dime may be "yours", but you aren't allowed
to disclose it without their permission.  So you can refuse to sign the 
assignment form, and lose the job of course, but you will not be able
to develop the idea yourself.  You can develop and patent *improvements*
of the idea, but you if you file before your former employer's application
goes public, then you are violating the NDA by revealing the information
you agreed not to reveal.  And they don't get to keep their patent if
your name isn't on the patent and assignment, so why should they file? 
Meanwhile, if somebody else files for the same idea in the meantime
(very likely) then both you and your former employer are screwed.

Have you done a patent search?  www.uspto.gov .  There are over 6 million
patents out there, about 500K are currently in force in the areas of 
electronics and computation, and chances are pretty good that somebody
has already come up with the same idea and already patented it.  It will
take about 100-200 hours of search to find this out.  But wouldn't it be
really awful if you quit over this, and it is all for nothing? 


If, by some miracle, you do get a chance to apply for this patent
yourself,  you will be paying between $20K to $100K to actually file
it, and at the end of an arduous process you will have what amounts 
to a license to sue somebody.  I write most of my own patents, and
do the drawings.   My patent attorney cleans it up, writes the claims,
and jumps through all the hoops of filing.  My patents typically sail
through in a couple of years.  About half of all patents applications
never make it through the process, and a large fraction of those 
remaining won't survive a court battle.  The Nolo Press book "Patent
it Yourself" tells you just about all you need to know to work with a
helpful lawyer.  Trying to do it all on your own will be frustrating
and risky.

Morality:  You were paid by your current employer to do things that will
make them richer.  If you feel they must compensate you extra for being
brilliant, you should have warned them ahead of time and they would have
instead hired someone less brilliant - or less demanding.  If you don't
like working that way, then by all means employ yourself.  Many do.  
But giving yp "your ideas" is the nature of working in a technical
enterprise.  They take the risks, and they get the big rewards.  You
get a regular paycheck, and if you cause a patent to happen you get
another bullet on the resume.  Your bullet item will not be less
valuable if the boss also gets a bullet item.  And if the CEO has 
done patents before, don't minimize his contribution to the process;
patents by veterans are better than those by newbies.

Intellectual Property:  I am writing an article about this, so I won't
go into detail here.   "Intellectual Property" is a metaphor applied
to an arbitary class of law, it is not a real thing.  The term first
appeared in the name of a U.N. Committee in 1967 (!!), and was seized
by the legal community as a way to improve their image and make more
money.  It worked, and now people are thinking that they "own ideas",
and paying lawyers billions to attack other inventors rather than serve
customers.  You can see what a mess that stupid concept is making of
technology in general, and is about to make of your career in particular.

This is a major reason for the dearth of Linux hardware drivers;  
manufacturers hide the source for their Windoze drivers because the 
sources reveal too much about the architecture of their chips.  Why
not reveal?  Because patents are so thick on the ground that any time
you design a chip you inadvertently violate dozens of them.  This is
very expensive to detect and prove by tearing down a chip, but very
easy to detect by looking at code structures and variable names.
Safer to shut up and join a pack of thieves doing closed source.

I won't advise you to roll over on this;  the relationship is poisoned
and you probably should move on, leaving the position for someone with
different expectations.  You should think long and hard, before taking
the next position, about what relationship you are willing to accept
with your next employer.  If you don't want to lose control of your 
ideas, you probably need to start your own company.  After 10 years of
that, you will find out how it looks from the other side of the desk.

If you do decide to stay, you can patch things up with your current
employer by helping them write up a "yellow dog" contract.  This gives
them ownership of the ideas you develop on their paycheck.  That is 
hard to swallow.  But if you can help, and research things properly,
you can limit the time period and the scope of the agreement, and that
will give you and others the freedom to move to new jobs, or invent
independently on your own time.  I've walked out on contracts that came
with stupid yellow dogs, and stayed with others that were more reasonable.
Help the next contractor out by clearing this up, hmm?


Personally, I think the idea of "owning ideas" is evil.  Because 90% of
my fellow citizens haven't realized this yet, I have to tread lightly
and compromise an awful lot.  I do patents, not to claim ownership,
but to make specific things happen, most good, some bad.  But sometimes
there is no upside beyond the evil itself, and it is time to walk.

Keith

-- 
Keith Lofstrom           keithl at ieee.org         Voice (503)-520-1993
KLIC --- Keith Lofstrom Integrated Circuits --- "Your Ideas in Silicon"
Design Contracting in Bipolar and CMOS - Analog, Digital, and Scan ICs