Category: Relationships and Society > Law
Asked by: lochradio-ga
List Price: $40.00
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 potential. 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?"
Re: IP law
Answered By: answerguru-ga on 08 Jul 2004 22:33 PDT
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 institution. 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: http://answers.google.com/answers/termsofservice.html Good luck with your endeavour! answerguru-ga
rated this answer:
Thanks for the super quick answer!
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: http://www.lojs.com. 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.
If you feel that you have found inappropriate content, please let us know by emailing us at firstname.lastname@example.org with the question ID listed above. Thank you.
|Search Google Answers for|