While working for a major US company headquartered in California (but registered in Delaware), I was the named first inventor of a patent application. I quit the company in 2014 to pursue a full time PhD outside the US (present status).

Recently, I learnt that the patent application was successful and notice of allowance was mailed out by USPTO on Jan 17, 2017. There is a non-negotiable 3 month deadline to pay the issue fees of $960, i.e on or before April 16, 2017.

Unfortunately, due to their present business strategy, my ex-employer decided not to go ahead with this application, and instead chose to abandon this.

Despite contacting the company and offering to pay the issue fees myself, the company flatly declined this opportunity. They also refused to reassign the patent back to the inventors (me and my manager, who is currently with the company).

Thus, my chance to take forward the application has been blocked by my employer and there is no reasonable chance of getting the patent granted for this invention.

In the original question that I posted here, I was suggested to look whether the employer is obligated to give a reasonable chance to the inventor to take it forward in their personal capacity before abandoning. Apparently, some states have this provision.

I am wondering if either the states of CA or DE have this provision. Which one should I consult? Where can I find an official online resource about this? I currently study full time PhD outside the US and I am not a US citizen or resident alien.

  • I fear I don't know the answer to this. However, since patents are a federal matter (per the US Constitution art 1, § 8, cl 8), I would expect that the states would not have their own laws about them. But this is only an assumption, rather than actual knowledge. – Maca Apr 9 '17 at 2:24
  • @Maca it might be state law if it's anchored in employation-law (whatever they are called). @ Op if nobody here has an answer you could ask on law.SE meta if they would accept the question and then flag it for migration if they do. – DonQuiKong Apr 9 '17 at 11:18
  • Krishna, I think at this point you should let it go. The company refused to give the patent to you or even to allow you to pay the fees so you aren't going to get your patent number. This won't really matter in the long run. It won't keep you from getting a job. – Eric Shain Apr 10 '17 at 21:49

Assignments may be differently worded; but you very likely assigned full title and ownership. If the assignee wants to waste the patent opportunity it’s their right. Actually, the assignee may have decided that going the trade secret approach would provide a better return than a patent. The facts of this situation may support this theory. But you did assign the invention so, like selling your house, it's no longer yours.

Some states have employment laws that are a bit more bases on equity. This may go to your original standing to assign your ownership without limitations. But that varies by state and is not the general rule. Were you informed of the nature of the assignment prior to signing? This could be an equitable issue.

  • While what you say is true, it doesn't exhaust the question. Op mentioned the state and asked specifically for the provisions in those states. – DonQuiKong Apr 10 '17 at 23:04
  • "General principles” are as far as I care to go for fear of practicing law. – TomO Apr 12 '17 at 16:36
  • Actually, I don’t think trade secret is an option since the application would have published. It does represent prior art to block someone else from patenting. – Eric Shain Feb 6 at 9:05

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