What if you like to invent but your company wants to own all your IPs? - Page 1
Forum section: electronics / general

author: engineheat
author_rank: Frequent Contributor
timestamp: November 20, 2017, 05:33:20 pm
content: If you are an independent employer who loves to tinker and come up with new devices in your spare time, but the company that you work for has an agreement that any invention or IP you come up with belongs to the company, even if it is done outside of work or not related to the company's activities.Any options? That really takes the incentives out of tinkering.thanks

author: ataradov
author_rank: Super Contributor
timestamp: November 20, 2017, 05:39:53 pm
content: This may be illegal in your state, check your state law.

author: bd139
author_rank: Super Contributor
timestamp: November 20, 2017, 06:53:53 pm
content: A number of years ago I was working for a company who issued a contract with this as an amendment. I asked them to change the clause specifically to include only in the line of normal duty and not during personal time. I got told that they wouldn’t enforce it ever and it was just a legal thing (bull-fucking-shit) so I quit. This turned some heads as I was quite senior in the company so I got a new contract and a welcome back 20% rise (because it was cheaper than the contract rate I quoted when after two days they worked out I was indispensable).Best option is always to walk away from predatory clauses like that.

author: RandallMcRee
author_rank: Frequent Contributor
timestamp: November 20, 2017, 07:01:14 pm
content: A reasonable company will have a workaround but it is up to you to figure it out and press for it. At my company you must list exemptions specifically. So, yeah, when I invent a new turntable motor my employer won't care. Anything else--not mine.

author: Jeroen3
author_rank: Super Contributor
timestamp: November 20, 2017, 07:08:13 pm
content: They can only enforce this by court and only on subjects that would compete with the company.Don't compete with your employer with projects at home.

author: Mr. Scram
author_rank: Super Contributor
timestamp: November 20, 2017, 07:23:25 pm
content: Quote from: engineheat on November 20, 2017, 05:33:20 pmI've had this excluded before signing the contract. If it isn't made for my employer or a customer of my employer, it's not theirs.

author: Mr. Scram
author_rank: Super Contributor
timestamp: November 20, 2017, 07:25:17 pm
content: Quote from: RandallMcRee on November 20, 2017, 07:01:14 pmThat's something I would refuse, if I'm honest. They can can do the reverse and list what they want included beforehand, if they insist.

author: Mr. Scram
author_rank: Super Contributor
timestamp: November 20, 2017, 07:27:04 pm
content: Quote from: Jeroen3 on November 20, 2017, 07:08:13 pmThis massively depends on both the country you're talking about and the contract you agree on. Blanket statements like these only make sense if you define the boundaries.

author: Jeroen3
author_rank: Super Contributor
timestamp: November 20, 2017, 07:41:01 pm
content: Quote from: Mr. Scram on November 20, 2017, 07:27:04 pmTrue. Court and legal system in US works vastly different than europe. Didn't pay attention to the flag.

author: HalFET
author_rank: Frequent Contributor
timestamp: November 20, 2017, 07:51:46 pm
content: Quote from: Jeroen3 on November 20, 2017, 07:41:01 pmYeah, in Europe they'd have a lot of trouble enforcing a clause like that. In the US not so much I would expect...

author: Mr. Scram
author_rank: Super Contributor
timestamp: November 20, 2017, 07:57:08 pm
content: Quote from: HalFET on November 20, 2017, 07:51:46 pmBe careful though. I've seen someone in the EU get in a huge amount of legal trouble because of something common knowledge said was unenforcible. It ended up costing tens of thousands of dollars.

author: floobydust
author_rank: Super Contributor
timestamp: November 20, 2017, 10:45:51 pm
content: Old crappy companies have the overbearing IP agreements that say they own ALL your inventions, ideas, works, even conceived outside normal working hours. Refuse to sign that shit, but it's not easy when you are being hired. I've said "no" and they either strike that ("ALL") clause, or I seek council and go to an IP lawyer to change the contract. New employers do not like this.You can tinker on anything outside your employer's products or industry, the inclusion clause I see lately is "related to the [employer's] business".It makes sense- as some people develop a competing product all the while working for a company, with the inventor's full intention to quit and immediately start a competing business.I also encounter IP agreement clauses stating I will not work on any company X technology for (usually 1-3 years) after I quit company X. These do not hold up in court, as company X "cannot take away your right to prosper" and prevent you from taking a job somewhere.

author: T3sl4co1l
author_rank: Super Contributor
timestamp: November 20, 2017, 10:51:25 pm
content: Quote from: floobydust on November 20, 2017, 10:45:51 pmBut they do give your potential future employer something to think about, at least in states where such clauses have held up (e.g., not in California). Their case may not be very good, but legal expenses are legal expenses, and a smaller employer may not be willing to risk that.Tim

author: Mr. Scram
author_rank: Super Contributor
timestamp: November 20, 2017, 10:57:04 pm
content: Quote from: floobydust on November 20, 2017, 10:45:51 pmNot being allowed things related to the employer's business still doesn't make sense. You're obviously going to tinker with things related to what you're working on. If they want to own it, however, they should pay for it. I'm not working for free. Well, I technically give away a lot of hours, but that's my own choice

author: razberik
author_rank: Frequent Contributor
timestamp: November 20, 2017, 11:03:56 pm
content: Quote from: floobydust on November 20, 2017, 10:45:51 pmThis works in CZ, however company X is obliged to pay that person 50% of his salary by law.I know case when this happened. Very well paid manager told he quits for better Y company and company X said "No, we will pay you 50% and you are not going to work for Y".It was 6 months of vacation for him with royal salary. Well spent time traveling around the world, basically for free.

author: floobydust
author_rank: Super Contributor
timestamp: November 20, 2017, 11:09:35 pm
content: Some companies do hire a bunch of engineers from a competitor which can be quite damaging and expensive lawsuits result.For one-of hires, I find future employers quite happy to hire someone whom worked for a competitor. If you can prove you applied for the position vs they head-hunted you, it's OK.In Canada, the courts rule in favour of the employee having a right to have a job, verses be unemployed due to an overreaching IP clause signed at a previous employer, preventing one from working.Tim, how are you as a consultant, handling IP agreements because you work on a variety of industries and companies, eventually these IP agreements mean you can't work on it, as you already have.

author: Mjolinor
author_rank: Frequent Contributor
timestamp: November 20, 2017, 11:11:44 pm
content: Quote from: T3sl4co1l on November 20, 2017, 10:51:25 pmAre there any cases where it has held up? I have never seen one and any people I have worked for have removed it without any questions or objections. I recall at least three times in the States, Florida, Boston and Kansas, there are probably others because I have always refused it whenever I have worked over there.

author: T3sl4co1l
author_rank: Super Contributor
timestamp: November 20, 2017, 11:54:13 pm
content: Quote from: Mjolinor on November 20, 2017, 11:11:44 pmTypically, if offered with a bonus or some kind of compensation, it holds. Related:https://www.law360.com/articles/607915/4-noncompete-cases-you-might-have-overlooked-in-2014Tim

author: thermistor-guy
author_rank: Frequent Contributor
timestamp: November 20, 2017, 11:54:29 pm
content: Quote from: engineheat on November 20, 2017, 05:33:20 pmYeah, I've been down this rabbit hole. You may have some wiggle room.If you signed an agreement to this effect, when you joined, then the agreement may be illegal, depending on its exact wording and the law (including common law) that applies in your jurisdiction. You would need good legal advice to answer this.In Australia, for example, it may be illegal - *may*, depending on the exact wording - because it constitutes a restriction on trade, especially the part about "not related to the company's activities". It interferes with your right to earn a living.If you signed an agreement to this effect after you joined (was it in the form of a deed?), then you may be able to claim you felt coerced into signing it, you didn't understand it, you had little opportunity to seek independent legal advice at the time, and when you joined the company you had no idea that company would try to own all your creative output in this way. You legal adviser may advise that you have grounds to contest the validity of the deed.Some end-runs may be available to you. One is to form a company, and do your tinkering for your company. You assign your tinkering IP to your company. The company owns your IP. If your current employer claims it owns all your work, even if done for another employer, then that seems like a case of arrogant overreach to me, and an illegal restriction on trade. Again, consult a legal adviser.A second is to do your tinkering in the form of a part-time research degree at a college or university. You have to navigate the IP agreements of the institution, but that can be easier than in the case of corporate agreements. You then claim that your IP was created as a student, and that the scope of your employers' agreement says nothing about this situation and should not extend to this situation. Again, consult a legal adviser. In Australia some years ago (don't know about now), research degrees were govt. funded so this was financially practical.A third, is to resign from the company, then offer your services as a contractor. This is a ballsy move, but it can work if they need you right now. This may free you from your current IP agreement.If you want to understand your rights, you will need to spend money on good advice. Good advice is expensive. Be warned that there are some idiot lawyers out there.Why do companies want you to assign agreements like this? The corporate lawyers love it, because they think it gives them certainty: no ifs or buts, the company owns everything. What could be simpler?Managers love it because, as non-creative people themselves (generally speaking), they see you as a resource to be controlled, owned, mined, and exploited. Your life, your creative life, is irrelevant. You, as an object, have potential value and management wants to extract it with as few impediments as possible. They may pretend to be benevolent empaths, but you learn the truth of the matter when it gets down to legal agreements over IP.Let me stress: you exact position depends on the exact wording of whatever you signed. Good advice will cost you.But let me stress too: tell your employer, in your mind, if not out loud, to Foxtrot Oscar, Bravo. One way or another, do what you want. It's your life.

author: Mr. Scram
author_rank: Super Contributor
timestamp: November 21, 2017, 12:10:31 am
content: Obviously, if a company makes a habit out of making life hard on employees, they're more likely to refuse any changes. This way, it could serve as a warning. If they put it in just to be sure, they shouldn't put up too much of a fight when you ask for it to be changed.

author: tggzzz
author_rank: Super Contributor
timestamp: November 21, 2017, 12:20:58 am
content: Quote from: bd139 on November 20, 2017, 06:53:53 pmAnd the obvious retort is "OK, that's good; so there's no problem with deleting that clause, is there?".I've seen manyworseclauses with multiple students renting a house, e.g. "you need a guarantor and you are jointly liable for any damage". So, if someone else's offspring sets the place on fire, I'm responsible for rebuilding costs? I think not. Frequently the owners/agents had merely copied a tenancy agreement without reading it, and were quite happy to change it!QuoteQuite right too.I had a clause in a patent agreement that said "you will take all action necessary to get this patent granted". I questioned it and got similar "soothing" (ahem) statements. It was a PDF document, so I hand edited the PostScript to insert the magic word "reasonable", then signed that. They didn't notice, but the next patent agreement PDF was lockedThey also sent me a separate document for getting a patent in the US, months after I had left the company. It had similar clauses, so I hand added the word "reasonable" in all the relevant places, signed and dated each change, and returned it. I heard nothing more.

author: Mr. Scram
author_rank: Super Contributor
timestamp: November 21, 2017, 12:29:17 am
content: It's alarming how many people won't read anything they sign. When I ask for the opportunity to read a document before signing, I'm consistently met with surprise, which tells me most people blindly sign whatever is put in front of them. No one ever objects to the question, though.

author: EEVblog
author_rank: Unknown
timestamp: November 21, 2017, 01:12:53 am
content: Quote from: engineheat on November 20, 2017, 05:33:20 pmYes, leave.I once interviewed at a (in)famous company were the owner was a nutjob who wanted to be the biggest patent holder in the world, they would file hundreds of variants a year just so he could claim he had more patent than Edison or something.Anyway, got to the final interview with the head honcho sidekick and they started grilling me on the stuff I do in my spare time. They said I can't do that any more, and I thought they meant tech stuff, but nope, when quizzed on it they said I wasn't even able to write a gardening book, let alone anything technical.I laughed and left.

author: EEVblog
author_rank: Unknown
timestamp: November 21, 2017, 01:16:49 am
content: Quote from: Mr. Scram on November 21, 2017, 12:29:17 amMy Altium contract was a doozy. It said in no uncertain terms that everything you invented PRIOR to working at Altium became the property of Altium! unless you declared in writing detailing all previous projects and ideas you wanted to claim. I gave them a 13 page report listing every project and idea I had, and they were stunned, no one had ever gave them a list before. They signed it.

author: Red Squirrel
author_rank: Super Contributor
timestamp: November 21, 2017, 05:35:10 am
content: Workplace agreements are ridiculous, but sadly most big companies have them. Some even go as far as dictating stuff like what industry you can't work in even if you stop being an employee. For example I'm pretty sure I recall reading that Microsoft does not allow employees to go work for Google. An ISP may not allow you to go work for the competition, etc. It's all too typical. The company I work for does have a clause that anything I do on my own time, they can take ownership of it if they want, though I've never heard of it actually happening. I think it's BS and this stuff should be illegal. Companies should not be allowed to get into your life when you're off hours. If you show up and do your job, then they should not be able to dictate stuff you do on your own time.Leaving or not signing is not really an option either. There's not really a lot of high paying jobs now days unless you want to move to a big city. They know this, so that's why they can get away with these ridiculous agreements.

author: amirm
author_rank: Regular Contributor
timestamp: November 21, 2017, 06:08:53 am
content: Quote from: Red Squirrel on November 21, 2017, 05:35:10 amI used to work for Microsoft and there is no such restriction at all. They would get into a lot of PR problems if they did. Indeed since I left they changed thing so you can even moonlight and do contract work without prior permission if it is independent of the work you do for the company.As an executive (VP) I did have some additional restrictions I think with respect to stock ownership in competing companies but that was it.That said, if you left and immediately joined a competitor and took all your emails with you, watch out!Best thing to do is to leave on good terms, leave everything behind, and they won't bother you. Companies don't want to get a reputation that they sue their ex-employees so they think very hard before going after anyone.With respect to OP, an attorney can give best advice as to general attitude of the judges in your state/country with respect to such enforcements. 30 minute conversation won't cost you much and give you peace of mind.

author: EEVblog
author_rank: Unknown
timestamp: November 21, 2017, 06:18:19 am
content: Quote from: amirm on November 21, 2017, 06:08:53 amIMO don't spend a cent on that, just find another job without such a restriction.

author: tggzzz
author_rank: Super Contributor
timestamp: November 21, 2017, 08:57:51 am
content: Quote from: EEVblog on November 21, 2017, 01:16:49 amExcellent.I'd have been very tempted to slip in some ideas/projects that would overlap with Altium's business, partly to see if they read your report and partly as a form of stockpiled ammunition/armour. It shouldn't be too difficult to invent some such ideas on the spot

author: EEVblog
author_rank: Unknown
timestamp: November 21, 2017, 09:46:49 am
content: Quote from: HalFET on November 20, 2017, 07:51:46 pmThe goal is often not to win a case, it's to scare you into submitting. A big company could tie you up for years and bankrupt you in legal fees if it came to that.

author: Psi
author_rank: Super Contributor
timestamp: November 21, 2017, 10:16:42 am
content: i was also given a contract with something like that in it.The contract didn't state outright that they owned all IP i created outside of work hours, but it didn't exclude outside work ours either.So i questioned them about it and had the wording changed.Any company will want to cover IP you might create when doing your normal work tasks from home after hours. So they do have a legit reason to include your time at home in the contract and i don't see that as wrong. It just needs to have a clause to limit it to work related stuff,One way to do that, which business are usually fine with, is to scope limit the home-time issue to the specific industry that your work is in. "Work you do at home in industry X is our IP" etc..It's also a VERY good idea to get them to add an acknowledgment in your contract of your side-business/hobby. Something to basically say. Yes we are aware you do/make this other stuff and we're ok with it. If there is ever an issue with something you invent it's more clear-cut if it's related to your stuff or their stuff. Having it documented in the contract what is 'your stuff' and 'their stuff' helps.Of course, if your hobby/side-business is in the same industry as your work this will likely be a problem and I would stay away from any job where this is the case.

author: Jeroen3
author_rank: Super Contributor
timestamp: November 21, 2017, 10:35:24 am
content: Quote from: EEVblog on November 21, 2017, 09:46:49 amFor any party it will be cheaper going for a settlement. Here judges typically try to steer you towards this one more time during the session.

author: Mjolinor
author_rank: Frequent Contributor
timestamp: November 21, 2017, 10:41:21 am
content: There are valid reasons for an employer to own these things but defining the line is very grey and difficult.If you work somewhere and have access to expensive equipment that was necessary for your idea to achieve a practical path to reality then why should they not own it. Specifying the actual date and time that an idea matured into a viable solution is not possible so always there will be fighting about it and having a clause in your contract makes that easier. You have to expect it and consider it carefully before you take the job or accepting the contract.Just another of those problems that us mega brains have to contend with in life.

author: Psi
author_rank: Super Contributor
timestamp: November 21, 2017, 11:27:14 am
content: Agreed, if you use work equipment, even after hours, its very grey.

author: EEVblog
author_rank: Unknown
timestamp: November 21, 2017, 11:34:45 am
content: Quote from: Psi on November 21, 2017, 11:27:14 amNot as an employee at the EEVblog, it's written into the contract that's not a problem

author: tszaboo
author_rank: Super Contributor
timestamp: November 21, 2017, 11:57:01 am
content: Intellectual property:PatentsCopyrightIndustrial design rightsPlant varietiesTrademarksTrade dressTrade secretsSo I guess just dont do any of these? Nothing prevents you from making a schematic and PCB layout and make and sell your own products. I mean, you can just open source it, and make an excuse, that you had to do that, because GPLvx license. Do you plan to make a patent outside of working hours? Something where you are payed because of the IP? Seems unrealistic to me. Also, good thing about trade secrets, is that they are secret.

author: richard.cs
author_rank: Super Contributor
timestamp: November 21, 2017, 12:09:15 pm
content: Quote from: Mr. Scram on November 21, 2017, 12:29:17 amA friend of mine got a bad reaction when he asked to read a tenancy agreement (in-branch at a national estate agent chain) before signing it. Basically "I'm not waiting around for you to read it so you can sign it right now, everyone else does" so he asked if he could take a copy away to read and come back and sign it the next day. They said he couldn't do that either, and he had to get them to phone the regional manager before he was given a copy.Coming back to the original topic I wouldn't sign such a contract, either they agree to amend it or I'll go work somewhere else. I'd rather flip burgers than be unable to work on my own projects in my own time.

author: KNSSoftware
author_rank: Regular Contributor
timestamp: November 21, 2017, 12:15:33 pm
content: Quote from: EEVblog on November 21, 2017, 01:16:49 amI am surprised it even came up at Altium, as a software company. For whatever reason, it appears they had a need to develop hardware, but it is not like their business was to 'invent' hardware ideas to capitalise?? I would have thought, as long as no one was planning on producing any CAD systems, they would have no reason to question what you get up to.You can understand employers like Dyson are in a difficult position though, to protect themselves. You pay someone to come up with ideas, but how can prevent them from keeping the best ones for themselves. Even if the idea did come out of hours, just because it dropped into you head when you were not at your desk, does not mean it doesn't form part of your job to have those eureka moments.

author: kosine
author_rank: Regular Contributor
timestamp: November 21, 2017, 12:17:15 pm
content: The rules will vary between countries, but in the UK (and probably elsewhere) it can be a grey area.If there's an ownership clause in your employment contract, that will generally be upheld in court. But a lot depends on whether your job involves duties that could be expected to lead to invention. If it doesn't, then a case can be made that the employee is entitled the intellectual property rights, especially for anything done out of hours and not involving company resources. (Because you were never paid to invent and were not provided with the resources to do so.)Even if your work does involve activities that could lead to invention, there's still an argument over inventions unrelated to your employment. (Because you're known to be an inventor and would be expected to invent at the weekends for your own purposes.) This is a weaker argument, but not unheard of in case history.If a dispute ever breaks out, some things to be aware of:1. there's no statute of limitations on patents. A claim can be made decades after the fact.2. there's no requirement for either side to fully disclose all evidence before a trial. Either side can (and usually does) keep a few wild cards up their sleeves for use at the hearing.3. there's no burden of proof. The ultimate decision is made by the judge (usually a senior patent examiner), and it'll be for one side or the other rather than sharing/joint ownership arrangement.4. emails are accepted as evidence. The employer will generally dig out anything that suggests you invented for the company.In the UK, the final hearing is held at a special branch of the High Court, and you will need a specialist barrister. You can be looking at well over £1000/hr in fees. They will probably need to consult a Queen's Councillor, and they are five figures per hour. (The hearing is actually not that formal, no wigs and gowns, but they do have a stenographer typing everything up.)Before you get to that stage there will be a mediation session with an independent barrister (fees shared between opposing parties), and there's a general expectation that the parties will try to resolve things out of court.Case history is cloudy on the matter, so ultimately it boils down to who convinces the judge on the day. (Actually it usually runs to two days.) There is an option to appeal the decision, but it rarely changes the verdict.If you ever get into a dispute with a small company, then your best strategy is to stand your ground and try to reach a compromise arrangement where both sides benefit. (Always be seen to act reasonably.) Larger companies will have the money to up the ante until you fold, so you can expect an 18-month battle and £50k+ in fees.The other (safer) option is to quit the company and wait six months before doing anything with your idea, but even then you're not completely in the clear. As they say in Holywood, "where there's a hit, there's a writ". If someone wants to take your idea off you, there's nothing to stop them trying.(You might also want to look into intellectual property insurance companies, just in case.)

author: sokoloff
author_rank: Super Contributor
timestamp: November 21, 2017, 12:27:00 pm
content: Quote from: Mr. Scram on November 20, 2017, 10:57:04 pmRelated to line of business inventions being owned by the company makes sense to me.Take any random field. Suppose you're working on valves for an oil and gas company and "on your own time" come up with a substantial improvement to the valve design. "Yes, my job was to improve the design of valves. Yes, I did make a substantial improvement, but I distinctly recall that I had that insight while turning off the shower, so obviously, the improvement is mine and not the company's." That's just not going to play well in court is my prediction. (Nor should it.)(For the record, I'm an executive and strongly supportive of our employees' rights to tinker and own their inventions, provided they're outside the scope of what we do as a company.)

author: kosine
author_rank: Regular Contributor
timestamp: November 21, 2017, 12:50:03 pm
content: Coming up with a valve design whilst in the shower would most likely be deemed the property of the employer, but there have been cases (in the UK at least) where the point has been argued in court. The case history is not extensive, but it's not completely consistent either.There's a process in the UK called a "patent opinion", which is not very expensive (just £200). You can use it to get an informal review (by a senior patent examiner) of who's entitled to ownership of an invention."An opinion can help you negotiate a settlement or decide whether to proceed with full legal proceedings. An opinion is not binding on you or others involved. You can still proceed with full legal proceedings in the court or with us if you want to.Our opinion is an independent assessment of the main issues in a dispute, prepared by one of our senior examiners. We base opinions on papers you and anyone else involved send us."https://www.gov.uk/guidance/opinions-resolving-patent-disputes

author: cdev
author_rank: Super Contributor
timestamp: November 21, 2017, 01:52:26 pm
content: Some firms are also making employees sign non-compete agreements agreeing to not work in similar kinds of businesses for periods of several years after leaving their employment. Even pizza delivery people (!) have been forced to sign such agreements.

author: tggzzz
author_rank: Super Contributor
timestamp: November 21, 2017, 01:59:36 pm
content: Quote from: KNSSoftware on November 21, 2017, 12:15:33 pmIdeas are cheap and easy; implementation is expensive and fraught.A good employer will let the employee see the best way to get their patentable ideas implemented is with their company. But that has its limits: what happens if another company pays handsomely for expertise in the field, and what about non-patentable information? Classic examples of the latter are sales prospects and inside customer information.In none of those cases is the employee keeping the idea "for themselves".

author: BrianHG
author_rank: Super Contributor
timestamp: November 21, 2017, 02:07:17 pm
content: Quote from: kosine on November 21, 2017, 12:17:15 pm+1, not in the case of me having an employer, but just now finding out such companies exist...

author: KNSSoftware
author_rank: Regular Contributor
timestamp: November 21, 2017, 02:12:38 pm
content: Quote from: tggzzz on November 21, 2017, 01:59:36 pmI disagree. A crap idea is nothing, but an idea is not always some pipe dream. A company is setup ready to take a legitimate idea to a working level, with investment in equipment and workforce already, whether that it an enhancement, or a separate solution, if they believed in it Otherwise, if they are only interested after the tinkering and hard work, an employer would only need you to offer them first dibs on an idea, and then they could choose whether to invest their own time and resources, or let you peruse it in your own time for yourself.

author: amirm
author_rank: Regular Contributor
timestamp: November 21, 2017, 06:43:34 pm
content: Quote from: EEVblog on November 21, 2017, 06:18:19 amI assume if OP thought he could find another job as good or better without this restriction, he would have done that and not be asking us what to do.Almost every major company these days has policies about IP, prior inventions, moonlighting, etc. As such, it is very useful to speak to an employment attorney to know how enforceable those things are, and ways of getting them changed. I have done this and it has paid lots of dividends. This advice also comes in handy if you are ever laid off and face signing such things to get your severance payments.At $300/hour around here, a half hour conversation costing $150 is just good education.

author: Red Squirrel
author_rank: Super Contributor
timestamp: November 21, 2017, 07:34:38 pm
content: Quote from: amirm on November 21, 2017, 06:08:53 amThat's good to know, wonder if what I heard was from older days of Balmer. I remember an incident where he said "I want to F'ing kill google" because an employee went to work for them or something like that and it was against the contract. I don't really remember the full story so may have miss read.My company does have a clause like that though, but think it's only for retirement. If you retire you're not allowed to go do side work after in the same industry. I don't think it applies if you quit or are laid off. They don't really enforce it though, there's a guy who retired and he's actually doing part time contract work FOR our company.

author: Rerouter
author_rank: Super Contributor
timestamp: November 21, 2017, 09:05:02 pm
content: It took a bit of back and forth but on my current contract, but I retain ownership of my IP with an unlimited use clause for anything I design specifically for my job, In other words they can use it freely and in any context, until the end of time. So long as I submitted it to them. There was a non competition clause of sorts, but I narrowed down the scope to only competition that was against my existing company. And only for 1 month after termination of service.If you are worth it to a company. Then a fair bit of the contract can change.

author: floobydust
author_rank: Super Contributor
timestamp: November 21, 2017, 09:27:12 pm
content: Quote from: Rerouter on November 21, 2017, 09:05:02 pmIt's worth the hassle and drama to negotiate IP agreements, rather than be a sheep and sign it in stock form.Some asshole companies have "aggressive ask for it all" IP agreements. Once I was given a 22 page one that surely said they owned my balls too. Just terrible.

author: EEVblog
author_rank: Unknown
timestamp: November 21, 2017, 10:26:13 pm
content: Quote from: amirm on November 21, 2017, 06:43:34 pmIn Australia that would be illegal, you don't have to sign anything to be laid off, and the company is legally obligated to pay out your severance.I'd be very surprised if this wasn't the same in other countries.They can of course ask, and pressure you to do so, but only a fool would sign something in order to get their legally entitled severance pay.

author: tggzzz
author_rank: Super Contributor
timestamp: November 21, 2017, 10:40:10 pm
content: Quote from: Rerouter on November 21, 2017, 09:05:02 pmYes indeed.On the other side of this discussion, i.e. as someone writing contracts for a commercial r&D company, it wasnecessaryto delimit who owned the IPR on a project paid for by an external client.A typical conversation would be "You are relying on our expertise gained on previous projects for our past clients, and we expect to be able to do the same in the future for our future clients. Nonetheless, we will not sell the IP to your competitors in the field of X", where X was specified.Reasonable clients understood and accepted that. If they didn't, then we were reluctant to enter into contract with them.

author: langwadt
author_rank: Super Contributor
timestamp: November 21, 2017, 11:33:00 pm
content: Quote from: sokoloff on November 21, 2017, 12:27:00 pmhere the law is basically that anything you invent at work or related to that company's field belong to the company if they want it, which they have 4 months to decide, but, if the value of the invention exceeds what is to be expected from just doing your job you are entitled to get reasonable compensation. and there is is something like 6 months after quitting a job where it is on you to prove that you hadn't already come up with the idea before you quit.

author: rhb
author_rank: Super Contributor
timestamp: November 22, 2017, 12:17:08 am
content: Whatever you do, don't pull an "Evan Brown".http://articles.chicagotribune.com/2002-08-05/business/0208050013_1_alcatel-legal-fees-new-trialI knew Evan at the time. He was in large part responsible for organizing the DFW Unix user group. Sadly, Evan convinced the company that he knew how to decompile assembly code. They offered him a lot of money, but he wanted more and in the process destroyed himself. The sad part is that no decompiler can recover comments. Having worked on several million lines of old code, at least 500,000 lines of which had *no* comments at all, without comments it really doesn't matter if it's in assembly or C.As noted by others, no reasonable company will refuse contract language that exempts work not related to their business. Evan was a sys admin, not a programmer. But he was claiming an "invention" that was important to the company to the point they offered him something like a million dollars for it.On my last contract I asked for language that gave me ownership of the software I wrote. The client had a "non-exclusive, worldwide right to use ..." but I owned the software. I simply explained I was tired of rewriting software when I moved to another employer. It took a while to clear the lawyers (super major oil company), but was never an issue.

author: amirm
author_rank: Regular Contributor
timestamp: November 22, 2017, 12:58:32 am
content: Quote from: EEVblog on November 21, 2017, 10:26:13 pmIt is kind of the same here except that most employment is "at will" and there is no law stipulating minimum amount of severance other than maybe the two-week notice. As a result, when the company offers say, one week for every year you have worked, that is a "bonus" they are giving you and as such, can withhold it if they want. They hold this as a carrot to get you to sign the departure agreement.Often they offer you some work to finish before leaving and this can come with increased pay/bonus. Again, this option is also withheld if you don't sign the agreement.What is not well known is that you can negotiate these agreements if you have leverage with them, i.e. they really need you to finish your work. Or there is risk for them that you could sue for cause (discrimination, etc.). How clean their nose is in this being a real layoff determines how much willingness to negotiate.You are right that employment laws are very different elsewhere. I had to shut down one of our R&D groups in UK and it was quite a complex process.I have had companies try to get me to sign these things even when I am quitting! My answer is always a smile and saying, "if you want to pay me I will but otherwise, no."

author: blacksheeplogic
author_rank: Frequent Contributor
timestamp: November 22, 2017, 06:10:58 am
content: I've never had a problem with this in my contracts. I've also never had a company send lawyers to my home either. A lot of what's written into employment contracts is to stop aholes from screwing the company. If the company you work for are aholes just leave, if you are any good, a lot of good employers out there looking for good people.

author: Mr. Scram
author_rank: Super Contributor
timestamp: November 22, 2017, 03:52:13 pm
content: Quote from: richard.cs on November 21, 2017, 12:09:15 pmYou'd have to be a moron or very desperate to give in to that. You know it can't be anything good.

author: Mr. Scram
author_rank: Super Contributor
timestamp: November 22, 2017, 04:01:46 pm
content: Quote from: Jeroen3 on November 21, 2017, 10:35:24 amIt's not about cheaper. It's about squeezing the life out of a party with limited funds.

author: Bud
author_rank: Super Contributor
timestamp: November 22, 2017, 04:40:51 pm
content: Why not have some fun and design, say, a line of anal pleasure toys for, say, senior males, 70+. Make sure the company follows through on their requirement to claim ownership for it and use social media to spread the news. Opportunity is endless.

author: CM800
author_rank: Frequent Contributor
timestamp: November 22, 2017, 05:22:08 pm
content: Quote from: Bud on November 22, 2017, 04:40:51 pm^Make sure they file several patents.

author: KNSSoftware
author_rank: Regular Contributor
timestamp: November 22, 2017, 06:27:49 pm
content: Quote from: Bud on November 22, 2017, 04:40:51 pmThanks, I might take that one. The Incontinence Rabbit, with heart rate monitor, forHissafety

author: tggzzz
author_rank: Super Contributor
timestamp: November 22, 2017, 07:07:06 pm
content: Quote from: Bud on November 22, 2017, 04:40:51 pmMy understanding is that there already several household-name companies that cater for all that is necessary in that market. You may be familiar with these TV advertsand.(Yes, those are "safe for work"!)

author: Falcon69
author_rank: Super Contributor
timestamp: November 22, 2017, 07:51:05 pm
content: There's a TV series on right now, called 'Wisdom of the Crowd'. The person I am talking about in this show is in a legal battle right now with a company she used to work for. She has developed code for this app program that the show is about. The legal battle is, that the company she used to work for is suing her and got a court order for her to stop working on the code and program and with current employer because the company believes that all code she writes, Is property of their company. Why? Because the company paid for her schooling/college to learn and write said code.I know it's just a TV show, but makes you think.Can a company claim any and all inventions or developments that you do, because you learned how to do it at a college that the company paid for you to go to? So in a way, if you learn mechanical engineering, paid for by the company you used to work for, do they own everything you develop/invent that could be mechanical related that you do in your life time, even if you no longer work for them?

author: engineheat
author_rank: Frequent Contributor
timestamp: November 22, 2017, 08:05:53 pm
content: Quote from: amirm on November 21, 2017, 06:08:53 amYeah, I'll probably speak with an attorney. I'm a fresh grad finishing up school and I accepted an offer, with a starting date in January. I can't just not take the job, because I really want to work at this company. They gave me a great offer.The company is huge, it's in the Dow 30. Some of you mentioned asking them to change the clause or make minor modifications to it. Is it even likely that a big company with all that bureaucracy will agree to something like that? I think this is easier with a small company.I guess another option is to file the provisional patent on any ideas I have now before I start working there. Even if the employment agreement wants to own everything, it cannot pertain to anything prior to my starting date right?Thanks

author: Falcon69
author_rank: Super Contributor
timestamp: November 22, 2017, 08:09:55 pm
content: Probably not. If it is as big as a company you say it is, there will be a cost, maybe pretty big cost to them, to get with their attorney's to change the contract, just for you. If you are a recent grad, they'll just move on to someone else who will accept the contract as is.

author: Circlotron
author_rank: Super Contributor
timestamp: November 22, 2017, 08:24:51 pm
content: Haven’t read the entire thread.Maybe you should daily submit details of one nonsense invention after another. And draw up these details on company time. It is they that are requiring you to do this after all. The idea is to make their own demands tiresome to them. Let them know that they have the upper hand 😇 and that if they stop this requirement you will dutifully comply by stopping your submissions.

author: Mr. Scram
author_rank: Super Contributor
timestamp: November 22, 2017, 08:31:03 pm
content: Quote from: Circlotron on November 22, 2017, 08:24:51 pm"What do you mean, I'm not paid to draw up plans for a Ninja Turtle radar detector? It says it in my contract right here!"

author: grumpydoc
author_rank: Super Contributor
timestamp: November 22, 2017, 10:18:15 pm
content: Quote from: Mr. Scram on November 22, 2017, 03:52:13 pmPossibly not that mad to sign.If you could muster even the slightest proof that you were not given adequate time to read the document then the contract would be invalid and they would not be able to hold you to any terms.

author: cdev
author_rank: Super Contributor
timestamp: November 22, 2017, 10:40:45 pm
content: So-calledadhesion contractsare becoming the rule rather than the exception in all sorts of areas.Not just nationally, internationally,ISDSis an adhesion contract...

author: cdev
author_rank: Super Contributor
timestamp: November 22, 2017, 10:52:14 pm
content: Be careful about signing anything you don't feel good about. You need to get your ideas on the record as predating this or other employment in a way that isn't ambiguous.Get your patents submitted before you enter into any agreements. I would also make it clear that your pre-employment work is your own (thats how I would put it and make it clear that they understand that, make sure that if they want you to agree to anything else committing work you do for them, you must get it also in writing from them that your pre-employment work is unambiguously your own, also in writing.)

author: Mr. Scram
author_rank: Super Contributor
timestamp: November 23, 2017, 12:44:36 am
content: Quote from: grumpydoc on November 22, 2017, 10:18:15 pmI would make very sure that's the case in the country you're in. In a lot of places you're expected to examine what you sign before you sign. If you don't, that's on you. Unless they put a gun against your head or something. If you're not given adequate time, you shouldn't enter into the contract.

author: cdev
author_rank: Super Contributor
timestamp: November 23, 2017, 01:55:41 am
content: I'm not familiar with this kind of case but paying for (in)justice is on the rise, trend is to require binding arbitration under judges who moonlight as lawyers for firms that get all their business from big corporations.

author: thermistor-guy
author_rank: Frequent Contributor
timestamp: November 23, 2017, 01:57:39 am
content: Quote from: engineheat on November 22, 2017, 08:05:53 pmDon't assume that. It depends on the exact wording of whatever you're signing.May I suggest, if you are not doing it already, that you write your ideas down in hardbound notebooks, in ink. I suggest you date and sign the entries, in the presence of a witness who also dates and signs the entries. And keep the notebooks up-to-date.Maybe your ideas will turn out to be cool and interesting but not commercially valuable, in which my suggestion will seem excessive. Or maybe you're the next Gordon Gould inventing the laser:https://en.wikipedia.org/wiki/Gordon_GouldI don't know if US courts now allow electronic notebooks as evidence, to establish priority (to an invention). That would make hand-written notebooks obsolete. Your EE school faculty can guide you on that.

author: BrianHG
author_rank: Super Contributor
timestamp: November 23, 2017, 02:00:52 am
content: Quote from: engineheat on November 22, 2017, 08:05:53 pmCareful, in the US, when filing a Provisional, and you started work before it is a fully granted application (you'll need to wait years before working at your employer), your new employer my try to claim part of it, if not, it is easier for them to get your patent nullified. After all, they have the money which you don't...If you truly want to file a US patent before entering employment, and you want to be secure, I would say filing a normal patent as a 'micro-entity' ((read up on everything for this) which saves you up to 75% on filing fees and your patent can be granted within 1 year if you have 20 claims total or less, 4 of which are allowed to be independent if I recall correctly). Do not leave the open door which the 'provisional' does for a 12 month period where you may add updates to the patent if you are worried about your new employer driving a potential monkey wrench into your life in the future.And for god sake, never say a word or perform any function at your company remotely related to anything in your patent's claims.

author: amirm
author_rank: Regular Contributor
timestamp: November 23, 2017, 02:24:48 am
content: Quote from: engineheat on November 22, 2017, 08:05:53 pmThen take the job and don't worry about this. Getting professional work experience is far more important than rights to some side project for a year or two.QuoteI would very nicely ask your hiring manager about this. Write him/her an email saying that you like to tinker on the side and would the company really own whatever you do on this side using your own means. It won't be the first time someone has asked I am sure. He may get a positive reply and at any rate, confirmation of your read of the contract.

author: Mr. Scram
author_rank: Super Contributor
timestamp: November 23, 2017, 02:36:13 am
content: Don't assume things because you want it to be so. If you sign, be prepared to hand over the idea, or to cease working on it for the duration of your contract, though that's not a guarantee they won't consider it theirs if it takes off anyway. Considering it's a party with deep pockets, that'd be a nasty situation and one you'd probably lose.

author: engineheat
author_rank: Frequent Contributor
timestamp: November 23, 2017, 06:03:43 pm
content: Quote from: BrianHG on November 23, 2017, 02:00:52 amI've never heard of anything like this. Can you provide a link or more info? So they are going to ask me if I have any provisionals and if I say yes then they'll tell me I can't work there? That's scaryAnd I won't have this problem if I filed a regular utility patent?Thanks

author: cdev
author_rank: Super Contributor
timestamp: November 24, 2017, 03:06:44 am
content: You need to get help. Maybe you can find a law clinic.. But check their work. Dont trust what people tell you.Databases like Google Scholar (case law and journal articles) and Hein Online might be helpful..

author: BrianHG
author_rank: Super Contributor
timestamp: November 24, 2017, 05:24:58 am
content: Quote from: engineheat on November 23, 2017, 06:03:43 pmYes. It's is important to understand what a 'Provisional' patent is, it's up side and down side as my third patent was a provisional.A 'Provisional' patent gives you the filing date as the date of your core idea and claims being yours. The meaning of the 'Provisional' means you get 1 year to make amendment/additions to your patent text. As long as your additions don't alter your core idea, and you are not adding any new concepts to your patent, the examiner will allow the additions. After 1 year, you can no longer make any changes to your patent and it will continue through examination. Those who choose this route are after the earliest possible filing date, then having 1 year for a chance to finish designing the details of their idea if they come up with any. This also gives them a chance to pay part of the patent fees at filing, then the rest later-on (Now obsolete if you choose the cheaper micro-entity filing option.).The problem with the 'Provisional' is if you file, now get employed before that first year of allowable changes ends, your employer may claim that your employment work for them taught you whether or not you should have made changes to your patent text during this 1 year 'Provisional' period. This is a technical hole where you can potentially get screwed through...If you are worried about this 'hole' a provisional keeps open for 1 year, file a normal patent. If you are worried about the price, note after 1 year, the additional processing fees for the provisional patent comes out to the same as filing a normal patent right at the beginning. If you are trying to save money, google 'USPTO micro-entity patent rules'. You will save more immediately than even filing a provisional, though there are and extra 2 forms to fill out. The total savings for the micro-entity is 75% the normal patent cost as long as you stay below 21 claims, 4 of which may be independent and are patenting 1 invention. Keeping within these claim #s, you can request 'accelerated' examination as I have on my most recent patent which means you can get you patent granted within a year. (This may be useful if you are planning to sell the patent ASAP, or get third party investment ASAP) This might not be important to you if all you want is that 'filing date' of your idea and you are planning to make your own money over a few years to finance your idea yourself, establishing that date in stone when the US PTO first receives your patent application making all of that invention yours prior to employment. You are not obligated to tell your employer that you applied for a patent and if they find out, you are under no obligation to describe any of it to them. If you do, your patent will be nullified if contested in court under the guise that you did not believe you invention was a valuable enough idea to keep it a secret until it is patented. If you get a notice of allowance from the USPTO, (means they send you a date which your patent will be granted) and your employer begins to design something similar, now, don't tell your employer yet, but seek an IP lawer's advice first. Things will get messy, but, judging by your description of your employer, things could become lucrative. (Note I've been through a buyout, it is hell, frustrating and stressful beyond belief when dealing with a party who has unlimited financial and legal resources. It can drive you to the brink and if you don't do everything perfectly, your gonna go through hell.)I don't know your budget, but if you are trying to save, write your patent as best you can, then I would recommend seeking a patent agent, or attorney to go over your work and verify your text to make sure you aren't missing anything or leaving any gaping holes.Best of luck, google is your friend here & you can search existing patents on google since you need to provide similar inventions patent #s close to yours as part of your submition to show you've done due diligence. If you haven't gone this far, you may be throwing out time and money...EG: google 'Method for eliminating 3d cross images patent'or google '3d line muting patent'Best of luck.

author: amirm
author_rank: Regular Contributor
timestamp: November 24, 2017, 06:08:08 pm
content: One practical note for someone who has been on the other side of this: employers of major companies as a rule, will NOT want to go after employees. Can you imagine how bad it looks for GE to go and sue an employee for building something on their own after hours? The negative press will be terrible. And of course there is huge cost to getting into litigation from time and effort point of view even if the budget is unlimited. In many case I have let things go for this reason even when the offense was quite serious.The exceptions are when things get emotional or big deal such as going to work for direct competitor and potentially having taken information with you that you shouldn't have. Then the book may be thrown at you.Best advice I ever got from an attorney with respect to litigation was, "don't look like a thief in front of a judge." Leave on good terms and good intentions and you won't have to worry. As such, I am very doubtful that any fortune 500 company will go after an employee for IP developed on their own time and material regardless of what the written agreement says. This is on top of many states where the judges err on the side of protecting employees over employers.So while as I mentioned you should consult with an attorney, and ask for changes if you can, the above rule should put your mind at ease as a general matter.

author: phil from seattle
author_rank: Super Contributor
timestamp: November 24, 2017, 08:17:40 pm
content: Quote from: engineheat on November 22, 2017, 08:05:53 pmDo you understand the time and costs involved in filing a patent? 10 years ago it was $30-35K and 4 to 5 years to issue. Doubt it's gotten better. Also, most patents are pretty easy to work around - thus reducing the value of a single patent. And, you will need to spend time and money to defend your patent - bring money, guns and lawyers. You need to be absolutely certain that you have a world class idea and write a patent that locks down any possible workarounds. If it is in the scope of the job offer, then you need to discuss it with the company up-front. My guess is your great offer came about because of your expertise in that area. It's murky - as other have said, talk to an attorney.

author: cdev
author_rank: Super Contributor
timestamp: November 24, 2017, 09:01:01 pm
content: If you live anywhere near Palo Alto, CA, at least several years ago, (I'm pretty sure it was PA but there is a chance it was another SV municipality - Mtn View, Sunnyvale...etc. or Stanford Unive. ) they had and perhaps still have a municipal resource-they basically have a center for people to do patent research on their own, with all sorts of database subscriptions. It's walk in.Also there is a branch of the USPTO in San Jose where people can get walk in help.I think you should do that and make sure you are on the record as having gotten their help.Its entirely likely the company that wants your help is 100% legit but you should document your own ideas and apply for your own patent just so your work up to his point is documented. Its absolutely essential to do that. Also I would not sign any waivers of your rights in your already existing inventions. Just cross that part out.

author: BrianHG
author_rank: Super Contributor
timestamp: November 25, 2017, 03:14:09 am
content: Quote from: phil from seattle on November 24, 2017, 08:17:40 pmThis has improved drastically since the USPTO now offers the 'file as a micro entity' deal for those with low income, have less than 5 existing patents and are filing privately. Again, repeat from my above post: google 'USPTO micro-entity patent rules'. The program came about in 2013, so it's new. I already received my letter of acceptance for a patent issued 6 months ago staying within the rules and it will be accepted in the new year.QuoteYes, this takes a hell of a lot of money. You are not prepared to go down this route if you are seeking mere employment. The only use for your patent here is either to sell/license, or, if you have access, to get investment with those who have the deep pockets and legal backbone who will support you.QuoteYes, the vast majority of patents do nothing, make no money and just site there. It's takes more than just having a good unique idea to succeed here.To cover the workarounds, unlike my earlier patents, which I sold (it's what paying for the new one...), my current one is over 120 pages long. It is that good of an idea, and I wanted to cover all the work arounds. Even though my filing fees were cheap because of the new 'micro-entity' filing feature, I had professional help with the text and claims, so, it still came to 30k$, and now, before the US does the final grant, I'm spending another 15K for a PCT filing which gives me a 2.5 year window to file in other countries which costs even more, I'm looking at around an additional 100K$ to get the countries I want. Be aware I have experience with my 3 prior patents and have an avenue for either investment or sale of this patent.Like I said earlier, use google. You can search US patents there, they are complete and you can also search on the USPTO website. As I said, do your due diligence. Completely read other patents in the same field as your invention. Verify who wrote them, who owns them. Do you understand when I say in my previous post that you make a set of claims in your patent & you can have multiple claims, some in independent form. Even my latest patent took me 6 months to write and gone over with my patent agent making sure every single word, position of each sentence, figures and illustrations, and in the claims section, every comma, semicolon, hyphen and indentation COUNTS.......... + I've done searches of existing patents to check for prior art and list citations in my current patent to cover every angle possible and make sure no one can work around my core idea, and be sure, they cant. But to achieve this, I was doing nothing but editing text, testing, and illustrations for 6 months to make my first really big $$$ patent.(This one is in a class way above my older 3 from 15 years ago, if you haven't figured it out, the 2 google search examples I posted would show you 2 of mine which I sold.)QuoteThis can get ugly.... No matter what, keep your idea a secret. You may only tell your full idea under trust to an attorney you are seeking help from if he requires that much specific information from you.

author: engineheat
author_rank: Frequent Contributor
timestamp: November 25, 2017, 10:24:32 pm
content: Quote from: BrianHG on November 24, 2017, 05:24:58 amI am going to be as complete as I can with my provisional application, and include as many embodiment as possible. The specs and drawings will be done to the best of my ability, and then I will have a lawyer file it. I'm actually taking a legal course geared toward engineers in my school now and the professor has a law firm. I plan to just use his help.I don't plan on adding anything or making significant modifications after the provisional. The point of filing a provisional is to buy me 1 year worth of time to test the market, and also getting that early filing date before my employment, without having to spend tons of money right away. I don't think there would be many "technical holes" if I don't make modifications if I file an utility patent later.I also want to try crowdfunding to get money for filing the utility patent (something like Kickstarters). I feel nowadays with social media, crowdfunding is a great way to build buzz while alleviating some financial risk. So I guess the most important thing right now is to make my provisional as ironclad as possible?Thanks

author: cdev
author_rank: Super Contributor
timestamp: November 25, 2017, 10:40:20 pm
content: Don't delay

author: BrianHG
author_rank: Super Contributor
timestamp: November 25, 2017, 10:53:51 pm
content: Quote from: engineheat on November 25, 2017, 10:24:32 pmIf all you have read so far hasn't slowed you down, +1 on 'cdev's don't delay...As for the 'Provisional'. There is no difference between a utility patent and 'provisional' patent except for that 1 year of allowable change. If you don't plan to make changes and want to secure that hole, when asking your patent attorney/agent, they will give a similar recommendation as I.However, if he doesn't mention it, ask about filing as a 'Micro-entity'. This still makes a normal utility patent, but, if your income is less than (I think) 70k$us/year, you will save a lot of money and potentially get the patent 'issued/granted' within 1 year instead of 3-4 years. Your only limitation is you can only be describing 1 invention in your patent, not 2 or 3. Example, you may patent an electronic apparatus, or a software algorithm, or a chemical formula, or a new game, but not all 4 together. But the full patent price well under 1k$ is a bargain compared to above 5k$. (you will need to double check pricing... This doesn't include patent search or attorney fees, as a US citizen, you may be paying less than I as a foreign patent applicant.)Quote from USPTO's website:QuoteUS Citizen fees:https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-scheduleQuote from: engineheat on November 25, 2017, 10:24:32 pmIt is not whether you choose to make additions or not when filing your provisional. It is that your employer may claim that during this 1 year allowable change period, they may say what you have learned from their employment prevented you from making any changes to your patent when otherwise, you may have done so. Again, a murky situation which most likely wont happen. But filing a basic utility patent instead, you closed this loophole. Again, ask your attorney how worried you should be about this if at all.Quote from: engineheat on November 25, 2017, 10:24:32 pmYOU CANNOT get a patent on an idea that others know about, or that you have told anyone about. That is the rule. And with a 400$ micro entity electronic filing fee, if you are having trouble paying that, plus there is a closing fee later-on if granted, around 200$, I'm not sure Kickstarter will make it for you. Kickstarter is for when you have a proven design and are ready to go into production within a few months after a 1-2 month funding campaign.

author: engineheat
author_rank: Frequent Contributor
timestamp: December 01, 2017, 02:32:41 am
content: Quote from: BrianHG on November 25, 2017, 10:53:51 pmWhat I meant was, I would file a provisional patent application, then run a crowdfunding campaign, then use that money to file an utility patent within 1 year of my provisional application. So even though I've publicly disclosed the idea through crowdfunding, I can take advantage of my earlier filing date due to provisional patent. Is this okay? Again, assume my provisional patent is of high quality (full disclosure, etc...) and I do not make any changes in the 1 year period.The micro-entity sounds interesting. But is it only limited to US citizens? I'm a permanent resident.So I talked to a lawyer today, he is actually a law professor at my university. He gave me a quote for the provisional patent, and it's a bit more expensive than I thought. Roughly $2500 which is a lot of money for a student. So I wonder if there are other ways I can protect my idea from the (unseen) employment agreement aside from filing an utility patent or provisional patent prior to the start date of employment? Would it suffice to fully disclose my invention to a mentor of mine (through email or other 'written form') while having him sign a non-disclosure agreement? This way, I have not made any public disclosure, so I do not lose my right to a patent filing later. Yet at the same time, I have proof that my idea was fully conceived prior to my employment so when I file for a patent later during employment, my employer cannot argue that I had the idea during employment. This would allow me to delay shelling out major $$$ for an utility or provisional patent prior to employment. (My hunch says this approach has too much drawback and potential pitfalls, but I had to ask to make an informed decision)If the above approach is not viable, then I would have no choice but to file a provisional patent with a lawyer prior to my employment, and I would get on it right away. Either way, I'm totally committed to getting my idea protected because I've spent a lot of effort on it.Thanks

author: engineheat
author_rank: Frequent Contributor
timestamp: December 19, 2017, 08:55:32 pm
content: Finally saw the clause regarding IPs, here it is:"By accepting employment with XYZ, you agree that XYZ is entitled to all rights, including the right to claim priority, in any intellectual property that you create during your employment with XYZ which relates to XYZ’s business or which was created using XYZ resources. Such intellectual property includes all types of technical, artistic, or commercial creative work, in whatever form it may exist or may have existed. XYZ is also entitled to receive a prompt and full disclosure of such intellectual property, to apply for protection of such intellectual property that it deems appropriate, and your complete cooperation in executing papers necessary for establishing, maintaining, and protecting the intellectual property and for establishing the employer’s ownership thereof."--------------------------------I think the agreement includes things done outside of work hours too.Anyway, Like I said I have an idea that is related to the company's business. It's done during this semester (just graduated). If I file a provisional patent prior to employment with them, will I still own it if I follow up with an utility patent later? The iffy part is that my filing date will be prior to employment, but my potential issuance or publication date will be during employment.I guess if I write my provisional very detailed and comprehensively, and that my utility patent adds no new information, I might be okay? I have scheduled meetings with lawyers this week to discuss this. But it's nice to hear what you guys think, not asking for legal advice. There are lots of smart and knowledgeable folks on here and it never hurts to hear different perspectives.thanks

author: kaz911
author_rank: Super Contributor
timestamp: December 19, 2017, 09:18:59 pm
content: Did the US patent system not change from First to Invent - to first to file? So it used to be the first who could prove they had the idea - could kick out other patents for same. But Obama changed that to "First to File" - so now prior art does not matter as much as who files first?That is why engineering notebooks with pen and paper was always around. Write idea, date, document - for potential future patents. Now it is "Get an idea - call lawyer!".

author: james_s
author_rank: Super Contributor
timestamp: December 19, 2017, 09:27:06 pm
content: Quote from: EEVblog on November 21, 2017, 01:16:49 amThat's where I draw a hard line. I don't *like* the idea that a company could claim something I came up with on my own time during my employment but I can almost see where that comes from. I've certainly encountered people who spent a good deal of their employer's time working on some personal project that they then left and profited from. Trying to claim everything I've done prior to my employment though? Hell no, that should flat out be illegal to even request.

author: ataradov
author_rank: Super Contributor
timestamp: December 19, 2017, 10:41:58 pm
content: Quote from: kaz911 on December 19, 2017, 09:18:59 pmFirst to invent or first to file has noting to do with prior art. If there is a publicly available prior art, you can't file for a patent under any system. First to file makes it easier to resolve conflicts, since filing date is a concrete thing printed on a piece of paper, and invention date is flexible.

author: BrianHG
author_rank: Super Contributor
timestamp: December 19, 2017, 11:27:28 pm
content: Quote from: engineheat on December 01, 2017, 02:32:41 amYes you can claim micro entity. You do not need to be a US citizen. I as a Canadian in Canada used it. All it means is that you are privately filing your own invention, not as a company, and you can prove that your annual income is less than 80k$ us. (You need to double check this $$ figure.)If you are making more than 80k$, you will be upgraded to 'small entity' and additional charges of at least 1k$.Check the us PTO web site fees and google instructions on filing a US patent privately for the lowest possible cost.You can apply for a patent, which you can now call your invention 'patent pending' and immediately start a kickstarter fund and build and sell immediately. Others may steal your idea in the mean time until your patent is awarded. There are some caveats here as well which you may want to discuss with your teacher. Also, take a copy of all the info I gave you here on you topic and go over what I said with your teacher as I provided some golden valuable info.

author: engineheat
author_rank: Frequent Contributor
timestamp: December 20, 2017, 04:05:38 am
content: any idea on how my provisional patent might get affected by that employment agreement? Technically I've "created" the intellectual property before employment, since intellectual property is an idea. That's different from the "right" to it, which is a patent. I don't think it matters if the formal patent gets issued during employment. But that's just me.

author: engineheat
author_rank: Frequent Contributor
timestamp: December 20, 2017, 07:32:07 pm
content: So I consulted with a couple of lawyers and it seems anything I include in my provisional patent would be mine, as long as it is documented prior to employment, which the provisional patent obviously does.But even if legally I'm okay, I wonder if the company will hate me if I later disclose it to them and want to license it/or partner with them and they realized they I filed it before started working and they can't claim it. And decides to terminate me.

author: Mr. Scram
author_rank: Super Contributor
timestamp: December 20, 2017, 07:33:18 pm
content: Quote from: engineheat on December 20, 2017, 07:32:07 pmIf they hate you for this, it's time to move on anyway. They can't claim anything and everything you did prior to employment.

author: cdev
author_rank: Super Contributor
timestamp: January 02, 2018, 03:23:02 pm
content: Whatever you think get that application filed.Quote from: engineheat on December 20, 2017, 07:32:07 pm

author: Zero999
author_rank: Super Contributor
timestamp: January 03, 2018, 11:55:45 am
content: How about putting a third party's name (obviously someone you trust with your life, such as a spouse, a very close family member or friend) on the patent application?That way the patent is theirs, even if you had the idea, or is that not allowed? You could even buy the patent off them.Would it be necessary to prove the idea is theirs? I suppose it's easier to make that claim, if they have a qualification in a similar field.

author: tggzzz
author_rank: Super Contributor
timestamp: January 03, 2018, 02:26:52 pm
content: Quote from: Hero999 on January 03, 2018, 11:55:45 amBetter to keep the inventor's name on the patent, but to state the "assignee" is some other legal entity such as a company owned by the inventor.Alternatively, if the inventor merely wants to prevent other people from stopping them using the invention, publish the invention. Of course, the inventor cannot then get a patent on the idea and extract royalties from other parties, but that is notoriously difficult anyway! Canonical example:https://www.damninteresting.com/the-tragic-birth-of-fm-radio/

author: Mr. Scram
author_rank: Super Contributor
timestamp: January 03, 2018, 05:49:19 pm
content: Quote from: tggzzz on January 03, 2018, 02:26:52 pmThat story is a fine yet tragic example how having patents is as much about the deep pockets you need to defend them as it is a about actually having them, if not more. Just getting a patent is worthless, and the worst case scenario is that you'll be run into the ground for having it to eliminate you as competition.People fail to understand that patents today mainly serve the larger corporations, who can file them endlessly, defend them until the death and buy any fledgling company that comes up with any interesting new technology. This makes it almost impossible to break into certain markets, like telecom, even with a few patents in hand. This is why a lot of people have been pleading for a revision of the patent system, but obviously there's a strong lobby against that. "Think of the jobs!"

author: tggzzz
author_rank: Super Contributor
timestamp: January 03, 2018, 06:38:24 pm
content: Quote from: Mr. Scram on January 03, 2018, 05:49:19 pmA major use of patents in large companies is to trade them with other large companies; "we won't sue you and you won't sue us". As with the old rag trade saying, "never mind the quality, feel the width".

author: Zero999
author_rank: Super Contributor
timestamp: January 03, 2018, 07:33:41 pm
content: I agree that patents are a waste of time and money, along with most IP nonsense. I make my ideas public domain, unless it's something I've done for my employer.

author: tggzzz
author_rank: Super Contributor
timestamp: January 03, 2018, 08:48:37 pm
content: Quote from: Hero999 on January 03, 2018, 07:33:41 pmNo, they aren't a waste of time, but their applicability is often misunderstood. For example, it is worth remembering that the were invented in order tospreadknowledge skills and products.

author: Mr. Scram
author_rank: Super Contributor
timestamp: January 03, 2018, 09:00:11 pm
content: Quote from: tggzzz on January 03, 2018, 08:48:37 pmThey sure were, but definitely don't serve that use any more. It's indeed a tense equilibrium amongst the big boys, but it's largely maintaining the status quo and not fanning innovation and progress any more.

author: Red Squirrel
author_rank: Super Contributor
timestamp: January 03, 2018, 10:01:06 pm
content: Quote from: Hero999 on January 03, 2018, 07:33:41 pmI hate IP crap too. Human knowledge should be free for anyone to implement if they see fit. Why restrict advancement? Just look at the pharma industry, some medications can save lives yet they patent them so no one else is allowed to produce them for cheaper. The common argument is that why should one company do all the R&D and everyone else able to skip that part, well they still need to do their own R&D as they still won't know all the fine details such as the manufacturing process. They also still need to have the capital to start making it etc. Not like it can be done overnight.The only reason I would patent something though is so that someone else does not. If you come up with a successful product then some company can just swoop by and patent your idea and now you're not allowed to sell your product anymore. The issue is that typically they will patent some really obscure part that you would not even have thought of patenting though. Like the rate at which a LED is blinking, or the color pattern, or something weird like that. Then you have to completely redesign your product.

author: bd139
author_rank: Super Contributor
timestamp: January 03, 2018, 10:04:22 pm
content: Agreed.I'm actually going to release the product I'm working on as open source. Hopefully someone in China will rip it off and sell clones. Then I can brand them in the UK and sell them as bona-fide originals with a mark up on Amazon with a hefty escalated price for Prime deliveryThis kills dealing with the entire manufacturing and supply chain problems

author: Mr. Scram
author_rank: Super Contributor
timestamp: January 03, 2018, 10:06:48 pm
content: Quote from: Red Squirrel on January 03, 2018, 10:01:06 pmWell, the pharmaceutical industry is actually one industry where it is likely drugs for rarer diseases wouldn't be developed any more. The R&D companies would need to do themselves is negligible compared to the other costs that would be covered by the initial party. It's a complex situation with no easy answer.You can't expect the industry to take care of development while also expecting they work for free or the benefit of society. Pick one, but not both.

author: tggzzz
author_rank: Super Contributor
timestamp: January 03, 2018, 10:51:23 pm
content: Quote from: Red Squirrel on January 03, 2018, 10:01:06 pmThat's the expensive way to achieve that end.Much cheaper is simply to publish your scheme; then nobody else cansubsequentlypatent it (more accurately: such a granted patent would be found invalid when they attempted to enforce it).

author: tggzzz
author_rank: Super Contributor
timestamp: January 03, 2018, 10:52:50 pm
content: Quote from: bd139 on January 03, 2018, 10:04:22 pmYou stillneedto choose your licence carefully. There are websites that guide you through the process.

author: tggzzz
author_rank: Super Contributor
timestamp: January 03, 2018, 10:55:41 pm
content: Quote from: Red Squirrel on January 03, 2018, 10:01:06 pmThe first pill sold costs $1e9 (seriously), the second a few dollars.Your task is to persuade someone to give you the money for the first pill. How are you going to do it?

author: Mr. Scram
author_rank: Super Contributor
timestamp: January 03, 2018, 11:00:07 pm
content: Quote from: tggzzz on January 03, 2018, 10:51:23 pm"First to file" has made that a bit more complicated.

author: tggzzz
author_rank: Super Contributor
timestamp: January 03, 2018, 11:34:25 pm
content: Quote from: Mr. Scram on January 03, 2018, 11:00:07 pmObviously that's the simple version! Anybody expecting an accurate full discussion on a forum such as this is, um, optimistic

author: james_s
author_rank: Super Contributor
timestamp: January 04, 2018, 01:55:26 am
content: I also make my own creations open source, even if I wanted to sell one commercially there seems to be a relatively small overlap between people who want to buy a ready to use product and people who want to build one from scratch. If you give away the source, most people will still just buy one ready to use.Then there is the issue of unauthorized copies being sold, if someone wants to copy and sell your product they'll do so whether you open source it or not. If the idea is valuable enough for that to be an issue then it's valuable enough for somebody to invest in reverse engineering it or just designing something themselves that performs the same function.

author: cdev
author_rank: Super Contributor
timestamp: January 04, 2018, 02:49:28 pm
content: If the plans are open source, that forces you to price it competitively and not try to overdo it profit wise. That's why TPTB hate it.They identify so deeply with "optimizing the value in supply chains" that they aren't willing to even consider a world without it.

author: Red Squirrel
author_rank: Super Contributor
timestamp: January 06, 2018, 07:45:24 am
content: I don't know if this would work for employer related patents ex: they might still own what you make on your own time, even outside of patent law, but this may be of interest:http://www.defensivepublications.org/Basically it's a place you can publish plans and it will make it public domain but also protect you from it being patented, so you don't have to worry about getting sued if someone decides to patent your invention.Downside is lot of employers have agreements that they own everything you make, regardless of patents, so this probably won't be able to protect you from that.From looks of the site it seems rather targeted to Linux though, but it may work for other stuff too.

author: Zero999
author_rank: Super Contributor
timestamp: January 06, 2018, 01:27:40 pm
content: Quote from: Mr. Scram on January 03, 2018, 10:06:48 pmI think there's already a problem with getting drug companies to develop drugs for rare diseases. The solution is the non-profit sector stepping in. It also makes sense for countries with publicly funded healthcare to fund drug development, since it will cut costs, in the long run. It's a myth that patents are necessary for all drug development.https://www.ncbi.nlm.nih.gov/pmc/articles/PMC4591870/https://www.chemistryworld.com/careers/non-profit-pharma/6619.article

author: cdev
author_rank: Super Contributor
timestamp: January 08, 2018, 11:22:37 pm
content: Drug companies lie a LOT about their alleged costs and profits, especially to Americans and trade officials. Seehttp://www.pharmamyths.net/_market_spiral_pricing_of_cancer_drugs__120860.htmand especially this paper in BMJ- the best one I have seen on how wildly dishonest the drug companies assertions are:http://www.pharmamyths.net/_foreign_free_riders_drive_up_us_drug_prices____myth__96359.htmMost of their spending is on ads and lobbying.I used to know a CEO of that rarity, a progressive drug company. She had a lot to say about this.They should NOT be given any additional patent rights. Its a crime what they are doing.The UK government deliberately sabotaged its own NHS's pricing deals with drug companies, according to an NHS accountant I was exchanging messages with a few years ago. WTF?

author: Mr. Scram
author_rank: Super Contributor
timestamp: January 09, 2018, 07:55:21 pm
content: Quote from: Hero999 on January 06, 2018, 01:27:40 pmI makes sense to still patent it if you do the research with community money, just so you retain some control over who produces it. There's nothing preventing you from farming the patent out to a number of companies.However, we unfortunately see the opposite happening right now. Research is expected to be marketable ever more and fundamental research isn't easily funded any more, if at all. It probably boils down to governments not having the money to spend on the research and needing to see a return.

author: tggzzz
author_rank: Super Contributor
timestamp: January 09, 2018, 08:28:39 pm
content: Quote from: Mr. Scram on January 09, 2018, 07:55:21 pmLast I heard patent holders were required to licence patents under "reasonable" terms - that's the whole raison d'etre of patents.That makes it difficult to allow X to use the patent and refuse Y the use of the patent.

author: Mr. Scram
author_rank: Super Contributor
timestamp: January 09, 2018, 09:15:07 pm
content: Quote from: tggzzz on January 09, 2018, 08:28:39 pmAs far as I know that only applies to "vital" patents, like those required for making a smartphone. That prevents a few companies locking up a market with ubiquitous technology. I haven't ever seen that applied to specific drug patents.

author: tggzzz
author_rank: Super Contributor
timestamp: January 09, 2018, 09:23:21 pm
content: Quote from: Mr. Scram on January 09, 2018, 09:15:07 pmShades of grey. Lots of lawyer's fees.

author: Sceptre
author_rank: Regular Contributor
timestamp: January 10, 2018, 06:11:33 am
content: Quote from: engineheat on December 20, 2017, 07:32:07 pmWhether they hate you or not, I suspect that filing this patent application will jeopardize your employment. They likely extended an offer to you based on the expertise you demonstrated relating to a product that they want to develop and market. From what you have written, it appears that protecting what you consider your IP will also encumber that expertise, which may mean you are no longer worth the compensation that they offered. In practical terms, what are you going to do? Refuse tasks that you consider to be infringing? Make threats if you observe coworkers designing/coding using 'your' IP?Quote from: engineheat on December 20, 2017, 07:32:07 pmIf they are a Dow 30 company, I expect that their patent lawyers are monitoring filings around all technologies of interest, and it won't take them long to connect the dots. They will have figured out what they want to do about you well before you report for your first workday.Quote from: engineheat on December 20, 2017, 07:32:07 pmIn my experience, corporations have employees, and they have partners, but never the same persons.Also note that, separate from the IP agreement, there will probably also be an agreement to comply with all policies and procedures in your Employee Handbook (or some such). In general, Rule #1 is "don't do anything that is not in the Company's best interests." If there is a Conflict of Interest section, that Rule #1 is "don't compete with the Company." (One such agreement I'm familiar with prohibited employees from owning stock in any companies that were considered competitors.) Soliciting funds on Kickstarter to protect/promote/develop your IP could be considered as competition.Your specific circumstances may render the above null and void - perhaps the Company considers you a purple unicorn and will accommodate your demands (which is why I used plenty of weasel words rather than making definitive assertions). But I haven't read any such indications. In addition to talking to IP experts, I suggest that you seek out some profs (with industry experience) in the business school and ask them whether they think your Dow 30 company will play ball with you if you file.

author: paulca
author_rank: Super Contributor
timestamp: January 10, 2018, 11:54:22 am
content: Quote from: bd139 on November 20, 2017, 06:53:53 pmDid that when a company trying to recruit me sold me the dream of unlimited holidays, flexible working hours, etc. etc. Then handed me a contract and demanded I sign the waver for overtime limits (excess of 60 hours average over 6 weeks). And... a flexibility clause on EVERY single term in the contract. I handed it back to them, said I was offended they asked me to sign it and what would be the point since it states they can change every single clause without notification and at the company discretion. Damn American companies. We have employment rights in the UK (for now) you ball bags!Often you can however strike a deal at the time if a hobby turns into a money spinning project, if it doesn't compete with your company they will often give you a legally binding exclusion (or permission) letter to keep the IP for your personal project.

author: bd139
author_rank: Super Contributor
timestamp: January 10, 2018, 01:12:51 pm
content: I make sure I never use my signature when signing the employer's side of the employment contractActually this is why I prefer contracting. Getting money out of the bastards is an art though, one I'm still working on.

author: paulca
author_rank: Super Contributor
timestamp: January 10, 2018, 01:31:39 pm
content: Quote from: bd139 on January 10, 2018, 01:12:51 pmCareful... isn't that fraud/deception?QuoteContracting sounds great, I am currently working in a secondment and the daily rate my company are racking in is around £700 a day. I get less than a quarter of that. However, when the proverbial hits the fan I have seen a company suspend all contracts overnight. 100s of people were told to go home the next day. It was 2 weeks to Christmas. Go home, no pay, no job, read your contract.Similarly when the credit crunch hit a lot of companies paniced and suspended or terminated contracts all over the place.Then again I have been made redundant twice in my career. Mostly due to buy outs, mergers and the like. Buy the company, trash the competing product, sack half the staff etc. Although if you have been with the company for a while and their redundancy package is nice it can be quite lucrative.Friend of mine claimed he moved to New Zealand during that time as the contracts dried up.... turns out he actually got a girl pregnant, had 2 years back log of maintenance fees and the flight to New Zealand was cheaper.

author: bd139
author_rank: Super Contributor
timestamp: January 10, 2018, 01:53:40 pm
content: Contracts are only enforced in court. Doesn't matter until then and at that point the only metric is a sample signature. This tips the contract towards voided as no party can be held accountable unless you present your copy which is in force. You have to be a bastard to make money unfortunately.Contracting is hell. So much paperwork, but you'll see much more of the money. I see 58% of the current daily rate after all expenses, tax, corp tax, insurance, PAYE etc. Also you have to be your own accountant as they're all crap and dodge IR35 and all that stuff. WRT to termination, always work on fixed terms and only min 6 months. Plan not to work 3 months a year (this hasn't happened yet but might). Have people queuing up; sometimes it is better to not renew and take another contract or play a couple of people off against each other. Agents are all shit; make them work hard for you.I've had some quite big wins as well where I'll be hired for 3 months and the task will only take a month. Clients don't want to pay up for the 2 months they overestimated but if you wave the legal stick at them, they will pay up. They'll also come back to you later and do exactly the same thing again because the market is so dried up in certain places