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I am Working in a large organization. I have filled up application to file one patent - it's very bureaucratic(read political organization). It's myself and two other co-workers who did all the work(right from inception to implementation) but we have to include three other managers in this patent application(otherwise they won't allocate funds to file the patent) as well as vent out frustration on us later. My co-workers and myself are not happy to include non contributors as it's diluting our entire invention. I know we are going to get it filed by company's resources and it's already productionallized in our company - all the royalty will go to the company only.

Having said that - i have another idea of my own where i am not using Company's resources, time or anything that I learned while in this job. Filing fees for micro entities is $65(provisional) and at the most it will cost me something less than $1000. I have no plans to use attorneys unless they are adding some value.

What you suggest, should i do that? I haven't yet signed any document with the organization about Intellectual property rights etc..via which this organization can go behind me for my own idea.

  • Do you plan on using that invention? Or how do you want to capitalize the patent? – DonQuiKong Feb 24 '17 at 8:35
  • I'm not sure what your question is regarding the first half: perhaps you could clarify? For the second half, "should I do that" isn't really answerable without knowing what your goals are. – Maca Feb 24 '17 at 9:58
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    "I have no plans to use attorneys unless they are adding some value." Believe me, patent attorneys add value. – Eric Shain Feb 24 '17 at 14:38
  • @DonQuiKong. Yes the invention that I am trying to work - I want to capitalize it. Why should I let the organization to take credit(or royalty) of my work.? – Ashu Feb 26 '17 at 5:17
  • Royalties don't just appear out of thin air, I meant that you should be willing to found a start up or use the patent in another way, else it won't help you much. And attorneys make the difference between a piece of paper and a patent ;) – DonQuiKong Feb 26 '17 at 9:22
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Whether or not you have the rights to the invention depends upon circumstances, such as whether the invention was created during your regular work hours, whether or not you used company resources on the invention, whether or not the invention relates to products and services marketed by the company or whether or not the invention was independently invented by you and not as part of or during your employment. The existence of a written contract outlining the ownership of any invention as part of your employment usually determines the ownership, but even the absence of such an agreement may still not exempt the invention from at least partial ownership by the company if the subject matter directly relates to the company, and/or it was developed on company time using company resources. If it was not developed during company time or using company resources, then it is recommended to maintain written notes that show the independent development. The only conclusive way is to get a written agreement by the company disclaiming any interest in the invention. Second best is to consult an attorney and get an written opinion as to your ownership.

  • Yeah, that's kinda what our comments are trying to clarify, or at least the question is missing many relevant infos – DonQuiKong Feb 24 '17 at 21:23
  • This is an excellent answer considering the lack of specificity in the question. – Eric Shain Feb 25 '17 at 3:18

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