Comment Re:Inventors Duties Generally (Score 5) 241
I have been in your position before. You are probably tied up pretty tight in your obligations to sign the patent app and to assign your rights to the company.
However, you are under NO obligation to sign a patent app that is not properly executed. Such poor execution actually decreases the value of the patent and leaves it open to being set aside later.
Your best strategy is probably to be extremely helpful to your former company. Make the app as good as you possibly can. This will mean numerous revisions to the app. I am an engineer and I have been through application preps that have had twenty or more revisions before submission. You can wear them down doing a good job.
They may then abandon the idea as not feasible. You may also be in a better position to just be left off as an inventor after 10 or 20 go-rounds. You will also be in the loop over the next six or more months and from the standpoint of being an extremely professional, helpful former employee can make an excellent case for NOT patenting this idea.
For example, under the new patent regulations, and under all foreign patent office rules, the wrapper is laid open in 18 months whether the patent is granted or not. Does your company really want its secrets and all correspondence with the USPTO laid open to competitors in a year and a half if this patent is not granted? This means your good, but not patented, idea is open to everyone, including those in places where intellectual property is not recognized (like China.)
Does this company want to spend all the money involved in getting a patent that would be difficult and expensive to be granted, and if granted, difficult and expensive to defend? Isn't there a better use for their R&D budget?
Why not be an agent for positive change while still getting what you want?
Also, ask yourself, how would you feel if the patent was granted, but your name was not on it? Slighted? Just fine? Well, if just fine, ask if you may be excused from the process and explain why your contribution was not that significant. Remember, the named inventors must be involoved in the CONCEPTION of the idea. If you were only along for the "reduction to practice" (writing code, building hardware from someone else's directions, sketches, drawings you are NOT an inventor!). And, not being an inventor, have no business having your name on the app.
Good luck. This is one of the fine points of every engineer's or tech person's career. Make sure you do what you feel is ethically right.
However, you are under NO obligation to sign a patent app that is not properly executed. Such poor execution actually decreases the value of the patent and leaves it open to being set aside later.
Your best strategy is probably to be extremely helpful to your former company. Make the app as good as you possibly can. This will mean numerous revisions to the app. I am an engineer and I have been through application preps that have had twenty or more revisions before submission. You can wear them down doing a good job.
They may then abandon the idea as not feasible. You may also be in a better position to just be left off as an inventor after 10 or 20 go-rounds. You will also be in the loop over the next six or more months and from the standpoint of being an extremely professional, helpful former employee can make an excellent case for NOT patenting this idea.
For example, under the new patent regulations, and under all foreign patent office rules, the wrapper is laid open in 18 months whether the patent is granted or not. Does your company really want its secrets and all correspondence with the USPTO laid open to competitors in a year and a half if this patent is not granted? This means your good, but not patented, idea is open to everyone, including those in places where intellectual property is not recognized (like China.)
Does this company want to spend all the money involved in getting a patent that would be difficult and expensive to be granted, and if granted, difficult and expensive to defend? Isn't there a better use for their R&D budget?
Why not be an agent for positive change while still getting what you want?
Also, ask yourself, how would you feel if the patent was granted, but your name was not on it? Slighted? Just fine? Well, if just fine, ask if you may be excused from the process and explain why your contribution was not that significant. Remember, the named inventors must be involoved in the CONCEPTION of the idea. If you were only along for the "reduction to practice" (writing code, building hardware from someone else's directions, sketches, drawings you are NOT an inventor!). And, not being an inventor, have no business having your name on the app.
Good luck. This is one of the fine points of every engineer's or tech person's career. Make sure you do what you feel is ethically right.
