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Q: IP law ( Answered 4 out of 5 stars,   1 Comment )
Subject: IP law
Category: Relationships and Society > Law
Asked by: lochradio-ga
List Price: $40.00
Posted: 08 Jul 2004 21:54 PDT
Expires: 07 Aug 2004 21:54 PDT
Question ID: 371696
I had come up with a patentable idea a little over a year ago. I
worked on this idea only on my off time, not using any of my companies
resources. The idea is NOT related to the work I do in my division.

I tried to pitch the idea to my company, but the first group I pitched
it to said they were not the correct group that would cover this type
of idea. I then tried pitching to 2 other groups and in doing so
emailed my idea to several people within the company, as well as
posted the idea on an internal company web site to try and generate
interest. I did get some interest from my web site post, however in
the end, after the pitches were finished, all groups declined to
further investigate my idea. In trying to pitch my idea to the later
groups I did use company resources to try and pull up market info
about the general nature of the market surrounding the idea and profit

I know you can't give legal advice, but before going to an attorney I
would like to get a general idea of ...

"Is the idea now "owned" by my company because I tried to pitch it to
them, or can I legally patent the idea and try to develop it myself?"
Subject: Re: IP law
Answered By: answerguru-ga on 08 Jul 2004 22:33 PDT
Rated:4 out of 5 stars
Hi lochradio-ga,

There really isn't an all-encompassing IP law which governs this to
the best of my knowledge. Myself and several colleagues of mine have
been in the position where a personal patent was being sought and I've
found the following factors tend to determine whether or not your
employer has a stake in such work/ideas:

1. Whether or not you used company resources to come up with and/or
validate the concept (which you already considered). The latter can be
considered use of company resources if you took up the time of other
employees during working hours in proposing the idea.

2. The nature of the idea in relation to the industry that your
company competes within. Related patents are harder to attain 100%
ownership of than non-related in order to discourage gifted employees
from competing with the company directly.

3. The state/jurisdiction you live or where the company is
headquartered. Companies have been know to suppress individuals they
know are stars in order to prevent the employee from gaining leverage
on the company. This is intensified if there are many competitors in
the same region.

4. The company's viewpoint on research/innovation vs. operational focus.

5. The company's ability to market their product/service more
effectively by having a patent-holder on staff. This generally applies
to firms valuing innovation and perhaps having roots in an educational

By looking closely at these five factors you should get a fairly good
idea of how your company is likely to respond.

If you signed a non-compete or non-disclosure agreement upon being
hired by this company, read this (or have your lawyer read this) very
closely. It generally stipulates what you CANNOT do, but not
necessarily what you CAN do.

In hindsight, you probably would have been better protected if you had
considered these IP ownership issues prior to presenting the idea to
your company. Since this idea is out in the open, it isn't hard to
conceive someone from your company claiming they had some role in
coming up with it.

In my humble opinion, I believe its important to make your intentions
clear with your company and have a record of their official standpoint
(in a binding agreement of some sort if possible) before going ahead
with a patent. Even though they may not pursue partial or complete
ownership right now, success or profit resulting from the patent could
put you into a legal battle. At that point it would be much more
costly to defend your newfound assets.

I hope I've been thorough enough in addressing your query, and I want
to reiterate that Google Answers cannot provide official legal advice
as stated in the Google Terms of Service:

Good luck with your endeavour!

lochradio-ga rated this answer:4 out of 5 stars
Thanks for the super quick answer!

Subject: Re: IP law
From: pancaketj-ga on 10 Jul 2004 00:41 PDT
I have a patent pending in the USPTO, and have retained a patent
attorney to prepare and prosecute the patent application. My comments
are based upon conversations I have had with my patent attorney that
have addressed these very issues.

Unless someone else helped you develop the idea, the idea remains
entirely yours. You discussing the idea with others, on your time or
your company's, does not change or affect the ownership of the idea.
Even if the idea were 'stolen' by your company or another individual,
you could bring an action against that party and you'd succeed if you
could prove that you were the original inventor.

What you may have an issue with is the 1 year limitation upon filing a
patent from when you 'discovered' the idea. You should consult with a
Patent Attorney on this issue to see when your deadline is/was for
filing a patent application.

A highly qualified patent attorney I'd recommend considering is: While I can't speak for this patent attorney,
most will answer basic questions (like yours) for no charge as part of
an initial phone consultation.

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