Former employer asking for assignment rights

Question

My previous employer (I quit ~3 years ago) had an IP law firm reach out to me to ask me to sign a "COMPLETE ASSIGNMENT OF PATENT RIGHTS DEED". The patent was eventually issued in the US, and the company is listed as the assignee and I am one of the inventors.

Their e-mail states that the company is pursuing a patent application in India and that the Indian Patent Office requires each inventor to assign their rights in the application to the company so that the company may pursue this application.

1. Are they possibly using this as a reason to get me to sign it and maybe sell the patent? I'd like to understand what it means if I do sign it. If they did sell it, would I not get any royalties?
2. Do I have to sign this assignment?
   • I realize that I may have agreed to assign my patent rights, I haven't actually looked at the text in the original contract
   • What if they can't provide my signed initial employment contract?

Answer 1

Are they possibly using this as a reason to get me to sign it and maybe sell the patent?

Usually, when we do this it's because paperwork got misplaced in an acquisition or otherwise. The per-patent assignment (at least for us) is a second layer of protection, as our employment agreement requires the employee to assign all relevant IP rights to the company. This is a standard clause that is in most employment agreements for any reasonably large company.

As you mention below, you may, in fact, have an ongoing requirement from your employment contract to assign that patent to the company. It would depend on the specific wording of the employment agreement and on the jurisdiction as to whether and how it would be enforceable.

I'd like to understand what it means if I do sign it. If they did sell it, would I not get any royalties? Do I have to sign this assignment?

You're not going to be getting royalties. Unless you can resolve the ownership issue in your favor (unlikely) and want to spend a large amount of time and effort shopping the patent around to competitors, nobody's going to pay you.

Do you have to sign the assignment? Depends on your employment contract. I guess the worst that could happen if you refused to sign is that you're in breach of that contract. Are they going to take you to court because of that? Probably not.

They (the IP department) usually have alternative ways of resolving the issue (e.g. submitting the employment agreement instead of the assignment), if necessary. Practically, you're going to end up in the same place either way (they will own your stake in the patent), but not signing creates work and annoyance for their IP department.

I realize that I may have agreed to assign my patent rights, I haven't actually looked at the text in the original contract What if they can't provide my signed initial employment contract?

I've heard of a small payment being tendered in exchange for the signature when the company didn't have a copy of the inventor's employment agreement. The company still most likely would've prevailed in court, but a few hundred dollars was worth it to clear the cloud on the title without having to get the litigation team involved.

Answer 2

The standard employment arrangement (at least in the US) is that any intellectual property generated as a result of your employment is owned by the company. This is perfectly reasonable. They pay you to work and they own the results of the work. Regardless of this, there are customarily forms signed when applying for patents where the inventors assign rights to the company. It is possible your work agreement doesn't assign your work product to the company, but I've never see one outside of academia. Some companies provide incentives for patents. My former employer provided shares of stock to the inventors when patents issued.

To answer your questions specifically.

Are they possibly using this as a reason to get me to sign it and maybe sell the patent? I'd like to understand what it means if I do sign it. If they did sell it, would I not get any royalties?

Most likely they are doing it because they need your signatures to file the application. Whether or not they sell the potential patent makes no difference to you as you don't own the invention. I'm not sure why you think you deserve royalties.

Do I have to sign this assignment?

• I realize that I may have agreed to assign my patent rights, I haven't actually looked at the text in the original contract.
• What if they can't provide my signed initial employment contract?

My guess is you can refuse if you want, but it won't really stop them from pursuing the patent application. For the rest, I can't offer an opinion as I'm not a lawyer. You could ask for compensation for your time. If it were me, I'd like to review the patent application if I'm an inventor to make sure it is accurate and not missing something important. I'd charge my usual consulting fee.