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Posted

I worked as a digital product manager for a biotech company for a number of years before being shitcanned along with a bunch of other folks after a merger last year. I just got an email from a lawyer from the company asking me to sign and return some documents. They are relevant to a patent application that was filed probably at the beginning of 2024, on which I along with my old manager and one of the scientists on our team are listed as inventors. The gist of the document seems to be that as an inventor i would be assigning to the company global and exclusive rights in perpetuity blah blah blah.

 

I should talk to a lawyer about this right? And any tips on doing that (google patent lawyer in my hood?)? I'm not incredibly liquid at the moment so on the one hand I would love if this was some free money but also I'm not trying to spend a bunch in lawyers fees if this is unlikely to be worth anything. I'm not particularly mad at the company, but I'm also not trying to just give stuff away to them (and they did fucking fire me while I was on a business trip with a 6 month old at home). And while I don't want to burn bridges I also don't think I'm likely to return to their industry specifically and certainly not the niche sector of the industry where my team was most active (which is a fairly small world).

This feels like the kind of thing where they should have had me sign this before giving me severance or even as the patent was filed. But the company is run by scientists moonlighting as business folks and is particularly stupid in that area. I don't believe that the patent has been granted ("30 mo US phase filing" is part of the email). Included in the email is the previous email from December where legal had tried to contact me to sign the documents, apparently unaware that I had been fired.

Anyways, any informed perspective from some of our law homies here would be appreciated.

Posted

I have well over a dozen patents.  Every one is assigned to the company I worked for when the invention was developed and the patent was filed.  I doubt you have any options here, but maybe @TwiceHorn or some other IP attorneys can advise otherwise.

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Posted
1 minute ago, jimmyjazz said:

I have well over a dozen patents.  Every one is assigned to the company I worked for when the invention was developed and the patent was filed.  I doubt you have any options here, but maybe @TwiceHorn or some other IP attorneys can advise otherwise.

That's absolutely what I would expect to be the case and would not be surprised if it is still the case. The thing they are trying to get me to sign right now is a Combined Declaration and Assignment for a Utility Application, which would seem to be the thing that assigns that right. But also it would seem to be the thing that declares me an inventor, and if it's as simple as that I don't know why they wouldn't just take my name off of it.

Probably nothing but I'd love one more bonus.

Posted
17 minutes ago, Celery Man said:

That's absolutely what I would expect to be the case and would not be surprised if it is still the case. The thing they are trying to get me to sign right now is a Combined Declaration and Assignment for a Utility Application, which would seem to be the thing that assigns that right. But also it would seem to be the thing that declares me an inventor, and if it's as simple as that I don't know why they wouldn't just take my name off of it.

Probably nothing but I'd love one more bonus.

Again, not an attorney, but I managed the patent portfolio for a public company, and we were VERY loathe to (a) name non-inventors as inventors and (b) leave off inventors.  I would start by asking if this confirms you as an inventor, and then document their answer for posterity.

Posted

Pretty standard stuff. Most employment agreements require assignment of inventions made on the job and can even effectively do so before an invention is made.   That is "i hereby covenant and agree to assign and hereby do assign, any inventions or works of authorship made by me during my employment."

In the absence of a similar provision, state law can be kind of blurry as to what rights employers have to the inventions of their employees. Some make it explicit, some like Texas have the" shop right," a perpetually free license to use your invention, at least internally maybe more. 

Probably not worth consulting an attorney unless you think you didn't invent in the course of employment. 

And given the low number of patents that ever generate cash revenue or royalties, you're probably not giving up much. 

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Posted (edited)

Also, to let you know what you're signing.  It's really two documents or a single document that serves two functions.

The Declaration is where you swear that you are actually an inventor and is required by the Patent Office for fairly obvious reasons.

The Assignment is a contract by which you assign your rights in the invention to the employer.

So, you are probably obligated by your employment agreement to assign, but you may also be due compensation.

The Declaration is a factual thing, you either are or are not an inventor and you can't be compelled to sign it if you really aren't an inventor or question that.

You are supposed to name all of the inventors upon filing an application, and it's a bit of a pain in the ass to change it, so refusing to sign that would be a pain in the ass, but don't if you don't think you're an inventor.

Edited by TwiceHorn
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Posted

Not a patent attorney; have many patents; worked at a company that filed 100s.  

What @jimmyjazz said and what @TwiceHorn said is my understanding - of course, Twice is correct, as he's an attorney.

IMO, the only way to extract some cash from this is to say that you are available to review and sign the document for $300 (or more) per hour, minimum 2 (or more) hours.  You need to review what you are signing, etc.

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Posted
3 minutes ago, boilerhorn said:

Not a patent attorney; have many patents; worked at a company that filed 100s.  

What @jimmyjazz said and what @TwiceHorn said is my understanding - of course, Twice is correct, as he's an attorney.

IMO, the only way to extract some cash from this is to say that you are available to review and sign the document for $300 (or more) per hour, minimum 2 (or more) hours.  You need to review what you are signing, etc.

The latter is true, if the employment agreement doesn't specify that you must do it for free.  And you really should review the application before signing.  It has the potential to invalidate the patent if you didn't.   There is no real penalty to you for refusing to sign a declaration, or for "falsely" signing one, although here is the operative language:

The above-identified application was made or authorized to be made by me. I believe that I am the original inventor or an original joint inventor of a claimed invention in the application. I hereby acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.

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Posted
3 minutes ago, TwiceHorn said:

The latter is true, if the employment agreement doesn't specify that you must do it for free.  And you really should review the application before signing.  It has the potential to invalidate the patent if you didn't.   There is no real penalty to you for refusing to sign a declaration, or for "falsely" signing one, although here is the operative language:

Does that mean the company can file the application and (potentially) be granted the patent with celery as a co-inventor even if he doesn't sign?

Posted (edited)
8 minutes ago, Celery Man said:

as is true with all of your posts
image.thumb.png.c9b51b271b28ef186b512b7a6b539f36.png

He does not manufacture or sell internets.  Yet.

PXL_20250409_000600988.MP.jpg

2 minutes ago, jimmyjazz said:

Does that mean the company can file the application and (potentially) be granted the patent with celery as a co-inventor even if he doesn't sign?

Not unless he's dead or cannot be found after diligent search.

And, I guess I should say, there's no criminal penalty for falsely or inaccurately signing a patent declaration, as a practical matter, despite the 18 USC 1001 language.

It's serious enough that the employer might sue to compel signature if the patent is important.

Edited by TwiceHorn
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Posted (edited)
10 hours ago, Ghost of NMAS said:

I would politely tell them that since you were terminated that you feel no obligation to provide them with any action, or service, without due compensation 

I wouldn’t ask for only 2 hours compensation as someone else wrote. See how important your signature is for them. Remember that any lawyer on this transaction will definitely be taking home more than you will. and you’re the key individual here. If you ask for the equivalent of your previous weekly salary, the worst they can say is no.

I would ignore the request and see how long they take to get in touch with you and how they reach out. If their lawyer or rep calls you within a week or two, it could indicate their need of you. Maybe even a week’s salary is short changing you. Then again maybe 2 hours is just comp, just don’t start by lowballing yourself.

your compensation shouldn’t be how much time you put into it, it’s how much value it generates for them. CEOs aren’t paid for 60 hours of work per week.

Edited by Nice Guy Eddie
Posted

While I wouldn't discourage trying to get a little coin out of his signature, the fact is that he was already compensated for the work that led to the invention.  Were he still with the company, they wouldn't pay him a dime to sign (other than perhaps a bonus, which can vary from nothing to substantial by company).

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Posted
12 hours ago, Celery Man said:

I worked as a digital product manager for a biotech company for a number of years before being shitcanned along with a bunch of other folks after a merger last year. I just got an email from a lawyer from the company asking me to sign and return some documents. They are relevant to a patent application that was filed probably at the beginning of 2024, on which I along with my old manager and one of the scientists on our team are listed as inventors. The gist of the document seems to be that as an inventor i would be assigning to the company global and exclusive rights in perpetuity blah blah blah.

 

I should talk to a lawyer about this right? And any tips on doing that (google patent lawyer in my hood?)? I'm not incredibly liquid at the moment so on the one hand I would love if this was some free money but also I'm not trying to spend a bunch in lawyers fees if this is unlikely to be worth anything. I'm not particularly mad at the company, but I'm also not trying to just give stuff away to them (and they did fucking fire me while I was on a business trip with a 6 month old at home). And while I don't want to burn bridges I also don't think I'm likely to return to their industry specifically and certainly not the niche sector of the industry where my team was most active (which is a fairly small world).

This feels like the kind of thing where they should have had me sign this before giving me severance or even as the patent was filed. But the company is run by scientists moonlighting as business folks and is particularly stupid in that area. I don't believe that the patent has been granted ("30 mo US phase filing" is part of the email). Included in the email is the previous email from December where legal had tried to contact me to sign the documents, apparently unaware that I had been fired.

Anyways, any informed perspective from some of our law homies here would be appreciated.

 

Didn't you assign all rights to the company when you were hired? If not, they can't force you to sign.

Posted
7 minutes ago, Bevo said:

 

Didn't you assign all rights to the company when you were hired? If not, they can't force you to sign.

It depends on the state.  Patent ownership is a matter of state law.  The first place to find an obligation to assign is any employment agreement, but it's shocking how many technical employers omit that from their employment agreements.

If there isn't such a clause in the employment contract, it's unclear.  The state law where you worked or that purports to control the employment agreement might supply the answer.  A very few states have a statute that controls.  California has one, but it doesn't much clarify the situation. https://california.public.law/codes/ca_lab_code_section_2870

I have seen and participated in a few cases trying to force inventors to sign declarations and assignments.  In the usual case, the obstreperous inventor finds the lawsuit unworthy of the cost of defense and the former employer can be persuaded that five figures or so directed to the inventor can be more worthwhile than directed to attorneys fees.

As a point of information, though.  If you are an inventor that has not assigned to your former employer, you are a co-owner of the patent and can license it to your employer's competitors freely without owing compensation.  So it'a a potentially nasty situation for your former employer.

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Posted

I don't think my first patent got assigned.  We didn't know what we were doing.  Unfortunately, the invention (while fascinating from a physics point of view) never led to a product with any real value.

Posted

As others have said, you might be able to get a small payout for your time to review and sign the docs.  However, the company can still go forward without your signature.  It a pretty straightforward process to file papers with the Patent Office showing your refusal to sign and overcoming that obstacle.  While it might be worth a small payout to avoid the extra paperwork for the lawyers - it's probably not going to be worth it to give you a large payout.  I worked in the office for 30+ years and have seen this exact scenario numerous times.  If Applicant can show evidence that they tried to get the uncooperative inventor to sign, the PTO will generally accept it and move on.  TLDR - not really that big of a deal for the company to go forward  without your signature.

Posted

Yeah I mean I signed a thing that says I have to do this and I did “invent” this thing on company time for company purposes and I’m not trying to be a pain in the ass to get back at the company or whatever. If they had fucked up and not obligated me to give them some IP that they need to move forward with the stuff I spent a lot of effort convincing them was obviously a good idea, I would have been happy to try and get them to write a check and it would have made me look back on them cancelling my corporate card before the charge for my Lyft to the airport cleared with a bit more of a smile.

Either way, that’s not what’s going on here - much appreciate the help and being able to avoid spending money on a lawyer to tell me to check my employment agreement (dumbass).

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Posted (edited)
4 hours ago, Bevo in VA said:

As others have said, you might be able to get a small payout for your time to review and sign the docs.  However, the company can still go forward without your signature.  It a pretty straightforward process to file papers with the Patent Office showing your refusal to sign and overcoming that obstacle.  While it might be worth a small payout to avoid the extra paperwork for the lawyers - it's probably not going to be worth it to give you a large payout.  I worked in the office for 30+ years and have seen this exact scenario numerous times.  If Applicant can show evidence that they tried to get the uncooperative inventor to sign, the PTO will generally accept it and move on.  TLDR - not really that big of a deal for the company to go forward  without your signature.

Ohhhh, that was your federal job.  interdasting.  Examiner?

And yeah it is possible to continue to prosecute an application without an inventor's signature, but the more important issue really is the assignment.  Without it, the inventor could potentially license all your competitors, immunizing them from suit.

Edited by TwiceHorn
Posted
8 hours ago, TwiceHorn said:

Ohhhh, that was your federal job.  interdasting.  Examiner?

And yeah it is possible to continue to prosecute an application without an inventor's signature, but the more important issue really is the assignment.  Without it, the inventor could potentially license all your competitors, immunizing them from suit.

Yeah - I posted in the RTO thread in CR but just took Elon's offer to voluntarily resign/retire back in Feb.  So technically I am still on the books until September but no longer working.

Started off as an examiner way back in the day.  Became a SPE 25 some years ago and then spent the last 20 or so as a QAS (which for those non-patent people out there is a Quality Assurance Specialist / pseudo manager type without having to actually manage people).  Saw a lot of crazy stuff (on both sides of prosecution through the years)!

 

So here's a story for @Celery Man as to how not to go about things after leaving your job and dealing with patents.  Pretty early in my career at the office, I got a Reexam application.  @TwiceHorn will know what that is but basically, it's a request for you to take a look at a granted patent and re-evaluate whether or not the original patent is valid.  So this reexam application was apparently filed by this ex-grad student from Florida who had recently gotten a couple of patents.  However, it turns out he had done all the research and come up with the invention while he was in grad school working for the University.  He graduates and then proceeds to go out and file for a couple of patents on the work that was done in his grad school lab.  The school finds out he got the patents and go to the cops.

 

Cops end up charging him with grand theft.  That's when he comes back to the office wanting us to say that he is the rightful owner of these patents.  The court finds out about it, he's found guilty and basically is told to drop the matter and not pursue the patents anymore.  He ignores all this and pisses the court off who then sends him to jail for violating terms of his probation.  Ended up serving time and actually put on a chain gang down in Florida.

 

Eventually, the Office just told the University to file Assignment papers demonstrating that they owned the patents and they would recognize them as the rightful owners.

 

 

https://www.nytimes.com/1996/06/14/us/former-student-in-patent-fight-leaves-prison.html?unlocked_article_code=1.-k4.kTT4.992kueITE_yB&smid=url-share

 

Spoiler

Former Student In Patent Fight Leaves Prison

Petr Taborsky, a former student research assistant at University of South Florida who was imprisoned in November in a dispute with the university over the ownership of patents, was transferred today to a work-release center in Tampa.

Although Mr. Taborsky, 34, will have more freedom at the center, he still faces civil and criminal charges. But state officials announced this week that he did not deserve imprisonment or chain-gang duty, to which he had been assigned for two months.

I don't know what he was doing in prison," Harry Singletary Jr., the State Corrections Secretary, said on Wednesday after ordering the transfer of Mr. Taborsky pending further decisions in his case.

Although Gov. Lawton Chiles agrees with Mr. Singletary and is ready to receive Mr. Taborsky's application for clemency, the university maintains that Mr. Taborsky stole valuable property and must be held accountable.

 
 

Mr. Taborsky was an undergraduate in chemistry and biology, working as a laboratory assistant at the university's College of Engineering in 1987, when he took part in a research project to make sewage treatment cheaper and more efficient. The project was sponsored by a subsidiary of Florida Progress, a utility holding company. The university said the company had all rights to the research.

Mr. Taborsky, who did the testing for the project, discovered a way to turn a clay-like compound similar to cat litter into a reusable cleanser of sewage, a process that has potentially valuable applications.

The project's principal investigator, Robert P. Carnahan, maintains that Mr. Taborsky was part of a research team and that the discovery stemmed from the team's decisions. But Mr. Taborsky said that he made his discovery after the project had ended and that he conducted related experiments on his own.

A jury convicted Mr. Taborsky of grand theft of trade secrets in 1990. He was sentenced to a year's house arrest, a suspended prison term of 3 1/2 years and probation for 11 1/2 years, as well as 500 hours of community service. Mr. Taborsky violated the terms of his sentence when he obtained three patents related to the research. The ownership of the three patents is still in dispute.

 

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Posted

Very unlikely that I’m going to try and go use this patent, lol. What an asshole.

I had completely forgotten about filling out the paperwork, I do remember thinking that the idea isn’t all that novel, just a natural application of existing technology. Either way kinda cool though I guess to get my name on a patent if it goes through - not something I anticipated doing in my career.

Posted
8 hours ago, Bevo in VA said:

Yeah - I posted in the RTO thread in CR but just took Elon's offer to voluntarily resign/retire back in Feb.  So technically I am still on the books until September but no longer working.

Started off as an examiner way back in the day.  Became a SPE 25 some years ago and then spent the last 20 or so as a QAS (which for those non-patent people out there is a Quality Assurance Specialist / pseudo manager type without having to actually manage people).  Saw a lot of crazy stuff (on both sides of prosecution through the years)!

 

So here's a story for @Celery Man as to how not to go about things after leaving your job and dealing with patents.  Pretty early in my career at the office, I got a Reexam application.  @TwiceHorn will know what that is but basically, it's a request for you to take a look at a granted patent and re-evaluate whether or not the original patent is valid.  So this reexam application was apparently filed by this ex-grad student from Florida who had recently gotten a couple of patents.  However, it turns out he had done all the research and come up with the invention while he was in grad school working for the University.  He graduates and then proceeds to go out and file for a couple of patents on the work that was done in his grad school lab.  The school finds out he got the patents and go to the cops.

 

Cops end up charging him with grand theft.  That's when he comes back to the office wanting us to say that he is the rightful owner of these patents.  The court finds out about it, he's found guilty and basically is told to drop the matter and not pursue the patents anymore.  He ignores all this and pisses the court off who then sends him to jail for violating terms of his probation.  Ended up serving time and actually put on a chain gang down in Florida.

 

Eventually, the Office just told the University to file Assignment papers demonstrating that they owned the patents and they would recognize them as the rightful owners.

 

 

https://www.nytimes.com/1996/06/14/us/former-student-in-patent-fight-leaves-prison.html?unlocked_article_code=1.-k4.kTT4.992kueITE_yB&smid=url-share

 

  Hide contents

Former Student In Patent Fight Leaves Prison

Petr Taborsky, a former student research assistant at University of South Florida who was imprisoned in November in a dispute with the university over the ownership of patents, was transferred today to a work-release center in Tampa.

Although Mr. Taborsky, 34, will have more freedom at the center, he still faces civil and criminal charges. But state officials announced this week that he did not deserve imprisonment or chain-gang duty, to which he had been assigned for two months.

I don't know what he was doing in prison," Harry Singletary Jr., the State Corrections Secretary, said on Wednesday after ordering the transfer of Mr. Taborsky pending further decisions in his case.

Although Gov. Lawton Chiles agrees with Mr. Singletary and is ready to receive Mr. Taborsky's application for clemency, the university maintains that Mr. Taborsky stole valuable property and must be held accountable.

 

Mr. Taborsky was an undergraduate in chemistry and biology, working as a laboratory assistant at the university's College of Engineering in 1987, when he took part in a research project to make sewage treatment cheaper and more efficient. The project was sponsored by a subsidiary of Florida Progress, a utility holding company. The university said the company had all rights to the research.

Mr. Taborsky, who did the testing for the project, discovered a way to turn a clay-like compound similar to cat litter into a reusable cleanser of sewage, a process that has potentially valuable applications.

The project's principal investigator, Robert P. Carnahan, maintains that Mr. Taborsky was part of a research team and that the discovery stemmed from the team's decisions. But Mr. Taborsky said that he made his discovery after the project had ended and that he conducted related experiments on his own.

A jury convicted Mr. Taborsky of grand theft of trade secrets in 1990. He was sentenced to a year's house arrest, a suspended prison term of 3 1/2 years and probation for 11 1/2 years, as well as 500 hours of community service. Mr. Taborsky violated the terms of his sentence when he obtained three patents related to the research. The ownership of the three patents is still in dispute.

 

And, after all that shizz, expired for failure to pay second maintenance fee.

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