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The company I work for is filing a software patent (US and Canada) based on the software that I have created for them. The company is asking me to sign an "Assignment of Invention" so that they own exclusive rights to the patent. I believe that this is fine given the fact that I created the software on company time, however I want to be reassured that the patent will be used in "good faith" (they won't become a patent troll) or they won't sue competition just because they want to create a monopoly in the market.

To give some background: we're a SASS startup and our CEO/(potential) investors believe that having a patent means we're more likable for investments.

Is what I'm looking for reasonable?

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I want to be reassured that the patent will be used in "good faith" (they won't become a patent troll) or they won't sue competition just because they want to create a monopoly in the market.

Is what I'm looking for reasonable?

Not really.

First of all, use of a patent in "good faith" is an extremely subjective guideline. How will "good faith" be determined? Or are you asking for veto rights whenever the company intends to enforce the patent?

Secondly, a patent holder is supposed to be able to maintain a monopoly (of limited scope and duration) as a reward for innovating. Part of the negotiation process of getting an infringer to pay a reasonable royalty, without going to court over it, is threatening to obtain an injunction in court. If an infringer knows the a patent holder won't ask for more than a reasonable royalty in court anyways, the infringer might be much more inclined to spin things out with a costly court case.

Essentially, you're trying to referee a boxing match with the mantra "no punching". That'll work.

  • Thanks. I've been thinking along the lines of what Elon Musk has done with Tesla's patents. The patent is good because it can protect against other patent trolls but we won't pursue purely with financial interests in mind. Is that still impossible to achieve or is it wishful thinking at a startup? – TheCloudlessSky May 22 '15 at 13:02
  • I haven't investigated the details of what Tesla has done with it's patents to "open source" them. However, the strategy outlined in the blog post is a little contradictory. "Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology." "[Tesla] felt compelled to create patents out of concern that the big car companies would copy our technology and then use their massive manufacturing, sales and marketing power to overwhelm Tesla." So, I take it that "copying" and "overwhelming" them is not using their technology "in good faith". – Atsby May 22 '15 at 17:10
  • The bottom line is, when they obtained their patents, they had a scenario in mind that they wanted to avoid by suing otherwise legitimate competitors, or having the option to do so. Absent such a desire, it makes zero sense to obtain a patent. – Atsby May 22 '15 at 17:16

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