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I used to work for company A, and during my employment, company A filed a patent application (to my knowledge, no patent has been issued yet) and I was listed as an inventor. While employed by company A, I signed various documents assigning the patent to company A.

Company A was acquired by company B, and company B are, to put it mildly, d-bags. I resigned from company B a few months after the acquisition.

Company B recently sent me some papers they want me to sign, one of which looks like the original assignment papers, but assign the patent to company B; the other looks like a boilerplate declaration for the USPTO (I am the named inventor, patent apps can lead to identity theft, stuff like that). The assignment form has a filing date in mid September, long after I had left the company. Someone from company B called me today, and asked when I would get this signed and back to them.

Do I need to sign this? What happens if I don't? Could I open myself up to legal action by not signing this?

I'm not interested in any kind of compensation, though I think it's a bad patent (it's for a software system), and I don't feel like I owe company B anything more.

  • Note, I'm fine with signing the agreement; I really don't care, though I'd like to see a software patent get torpedoed. As a related question, is there any trouble I can get into if I, say, include a lewd photograph in the envelope along with the documents? – Casey Marshall Oct 15 '14 at 4:57
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It depends on a few a things, mostly what your employment contracts said with Company A and (if different) Company B. The Company A one is probably a little more relevant, but you'd definitely want to dig up any contracts you signed that could pertain to their rules.

Unfortunately, that's pretty well the end of what I can think to suggest. It really depends on those. You'll want to look for anything that talks about getting you to help them get any patents that you work on. A lot of companies require that you assign any IP to them that you develop during your employment, and if you signed something like that, yes, you'll probably have to sign it, because this is likely a Continuation of your previous application.

Your best bet, per usual, is probably to speak with a patent professional who can read over your contracts and what they're asking you to sign now. But yes, it is possible that you'll have to sign it to avoid legal action.

  • I did dig up the "confidentiality agreement" for company B, which I did sign to become employed by them; there are clauses about assigning patents in this agreement, but they refer to a list within the same document, which doesn't list this patent at all. – Casey Marshall Oct 15 '14 at 4:55
  • @CaseyMarshall I'm not completely sure I understand what you mean by "a list." But it sounds like that would be an attempt to invalidate the contract, that might be an avenue to pursue. But it will cost you money, probably, so if you're just doing this as a way of getting back at Company B for not being nice (an admirable goal, don't get me wrong), it might not be worth it. Aside from that, if it does say that they own any IP you invented and you have to assign it to them, that's probably your answer. Although the Company A one would be a bit more relevant. But I suspect it does say it. – Matthew Haugen Oct 15 '14 at 7:07
  • The agreement has a section on IP/patent assignment, and referred to a schedule added to the document; that schedule (for my version of this contract) did not list any patents. I would like to not let this company get its hands on a broad software patent, but again, I don't care that much. – Casey Marshall Oct 15 '14 at 18:06
  • Under the new America Invents Act it is easier for them to proceed without you than it used to be. – George White Oct 17 '14 at 22:12
  • @CaseyMarshall Yeah, I'd probably just sign it. They can probably get it either way, even if they can't legally force you into it. If you're really invested in not letting Company B have it, you could speak with an attorney and read over your contracts and your position in the application. But it'll probably cost you more than nothing, and there's a reasonable chance that they'll get it anyway. I certainly understand your desire to not give it to them, but it's probably not in your best interest to fight too hard. – Matthew Haugen Oct 18 '14 at 3:56
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If they bought out Company A, they probably bought out A's IP. Which would include the patent rights that you signed over to A a long time ago. If push comes to shove, they can surely find documents that would prove their ownership of the patent. If they lost the paper trail, that's their problem.

If, on acquisition, you signed over the rights to a bunch of patents to B, then you can claim it's their incompetence that they didn't include the subject patent.

If you've found a way to invalidate the patent, you should write them back that in your opinion, the patent's not valid anyway because of reason XXX.

If you want to screw with them, ask them for a consultation fee so that you can review all relevant documents, and run the documents past your lawyer. Don't forget also to ask them for all relevant documents, including any paperwork that you signed initially. If they can't provide it to you, they probably don't have it.

Good luck!

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