4

In a large American HQed company I worked, based on an engineering work my manager and I did, the company filed a US Patent Application at the USPTO on March 2013. I am the first named inventor in the application. My manager is also listed as an inventor. As per company policy, we assigned the invention to our company, who then filed the utility patent application through a law agency specialising in patent applications. I quit the company in June 2014 to pursue a PhD in a university (present status).

We learnt through the US Public Pair Portal that the application has been successful in crossing all hurdles, and all that is left is to issue the patent. The notice of allowance was mailed on Jan 17, 2017. It says that we have exactly 3 months to pay the issue fees or else, the application will be abandoned. The three-month deadline falls on April 16, 2017.

I contacted my manager, who is still employed in this company. He, in turn, contacted the patent team, who said that they will not be proceeding any further with the applications, due to present business interests not warranting any further investment on this application.

This is a bummer, very agonising - a slip between the cup and the lip. So near, yet so far. I would really like to see the patent getting issued and having a patent number purely for boosting my CV. I have no financial interest in this application. I also do not care whether the company owns the patent when it gets assigned or not.

How can I take this through? I am willing to pay the issue fee myself. Is this allowed? How do I do this? What's the procedure? What are my choices?

Any help will be much appreciated.

Update: Final Outcome

Unfortunately, despite the best efforts, I have been informed by the authorities that they will :

a) not be paying the issue fees

b) not reassign it back to me

c) not allow me to pay the issue fees myself.

Thanks a lot for your suggestions.

Update 2: Finding out eligibility for damages

I was suggested by a member of the community here to look for potentially pressing for damages for not offering me the possibility to self-file or take the application forward personally. How can I get started with this ? I have no idea on the standard legal routes in the US. I am a full-time PhD student and cannot afford to pay a lawyer. I have to file the complaint myself (online?). Will it affect my future employability with this organisation?

  • At update 2: I don't know if you could get something and you would need an attorney for that. It would certainly affect your employability with that company. If you are not willing to accept legal fees as a risky investment, you'll have to leave it. – DonQuiKong Apr 8 '17 at 11:59
  • Alright. Before I drop it, can I ask how much does an attorney cost (typical minimum) and how do I engage one? – Krishna Apr 8 '17 at 20:19
  • There was an answer with a blog post about free first consultation, maybe that helps: patents.stackexchange.com/a/17582/18033 – DonQuiKong Apr 8 '17 at 20:21
  • First question you'd have to check is if they would have to have checked with you before abandoning. If not, there's no damages (obviously). Then you can find out if there would possibly be damages of an acceptable amount higher than the legal fees if you won. – DonQuiKong Apr 8 '17 at 20:24
  • Okay. I shall check this out. Thank you for your helpful responses in this entire situation. Before I approach the attorney for free consultation, I would like to see if the state of California mandates giving inventors a reasonable chance. Where can I possibly look for such laws? – Krishna Apr 8 '17 at 20:39
2

I am willing to pay the issue fee myself. Is this allowed?

I do not believe it is possible to validly pay the fee yourself (though, since I have never had the occasion to try, I could be wrong).

The issuance procedure generally requires that a fee transmittal form be sent along with the fee (MPEP § 1303). This form must be signed by the applicant (or their representative). You would not be an authorised person for signing the form, and therefore could not complete issuance formalities yourself.

What are my choices?

As noted by DonQuiKong, your only option really seems to be asking your former employer to attend to issuance formalities.

  • Do you know if the fee has to be paid by April 16th or can op get the patent issued even if it takes longer? – DonQuiKong Apr 7 '17 at 8:10
3

It depends on the contract between you and your (ex-)employer and your state laws.

If your employer does not want to pursue the patent application, in some jurisdictions/contracts they have to ask you if you want to pursue the application instead. In others, all you can do is ask them nicely if they transfer the patent to you or take your money to pay the fee.

As time seems to be an issue while actually getting the patent for yourself is not so much, I'd suggest you check your laws for employee inventions (service inventions) and your contracts and then talk to the company.

If they have to ask you before abandoning the application, you can use that as leverage, but getting the application for yourself without them agreeing is only possible through court. Which is probably costly and might happen to late to revive the application. This does not seem like a possibility here.

Also keep in mind that keeping a patent alive also costs fees, so instead of an abandoned application you will soon have an abandoned patent in your CV unless you are willing to pay those fees too.

  • It sounds like he just wants a patent number to put on his CV. If he could get the patent assigned to him for the cost of the filing fee, at very least he gets the patent number and the potential to license it. I wouldn't pay the fee and not get the patent assignment personally. – Eric Shain Apr 6 '17 at 17:19
  • @EricShain and the easiest way of getting that done is talking to them. – DonQuiKong Apr 6 '17 at 17:50
  • I completely agree. – Eric Shain Apr 6 '17 at 18:22
  • @EricShain, thank you for your reply. This is in the state of California, USA. I am a total noob and I am also not familiar with US laws. I used to be a US resident alien for the 2 years I worked there, but I am currently living elsewhere. Can you please point me to an authentic source for looking up this law? My only route to the company's patent department is through my manager, who has not yet responded to my query about reassigning the patent back to us. One final question - "If I fail to get the re-assignment on time, can I just pay up?" . $960 is a bit tough as a student, but well... – Krishna Apr 6 '17 at 19:44
  • 1
    @Krishna I personally don't think that a patent (or a patent application) makes a difference. You might have been an excellect recearcher, but the company's interests were not including IP rights. Anyway, you can include into your CV a copy of the notice of allowance from the USPTO, if you want to prove that your application passed all the hurdles. – chempatent1981 Apr 7 '17 at 5:55

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.