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My previous company contacted me to sign a "declaration for utility or design application using an application data sheet". They have filed a new patent application a few months ago based on the work I did when I was their employee (few years ago).

  • Do I have to sign this 37 CFR 1.63 and adknowledge I am the inventor ?
  • Do I own any right ? (I do not on the first patents that were filed on this invention, they were made during the course of my employment).

I do not know if they are new claims (first patent was 2008, last one not published yet, I can only assume they have decided finally decided to launch the product based on the invention in the end...)

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    The rights you have/don't have should be stated in your employement contract or a company policy. – DonQuiKong Aug 29 '17 at 11:13
  • Since it is based on work you did while an employee, I'd assume your employment agreement then controls this. Typically you probably ceded ownership to your employer. – Eric Shain Aug 29 '17 at 12:26
  • Thanks for your feedback. I guess when it comes a bit more complicated is that I have worked with this company in different locations under different contracts. the invention was when I was the UK, I made others that were patented during the time I was in Germany and I got a financial reward for that (I think it is a legal requirement in Germany), then I moved to Thailand where my new contract there said the other ones were "null and void" – user19665 Aug 30 '17 at 1:28
  • (I assume this means no more legal obligation between me and the UK/German entities). It ended up in a Mutual Separation (i.e. a disguised termination for no valid reason - they have used the "null and void" clause to avoid giving me compensations for the time I spent in the other countries by the way) - from then whatever I can do to NOT help them is welcome... – user19665 Aug 30 '17 at 1:28
  • You'll have to look at the contract from the time you made the invention, that should be the one that applies. You're right, there is a law for that in Germany (Arbeitnehmererfindungsgesetz). A null and void clause (to my non professional udnerstanding), even if signed, has no legal value in Germany against something in the law. You may basically not forfeit any of your legal rights in a contract between two sides with different power. However, I can't judge if you would have any claims against them in Germany anyways. (That just as a side note). You can edit your question if you want. – DonQuiKong Aug 30 '17 at 10:41
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I have to sign this 37 CFR 1.63 and acknowledge I am the inventor?

I doubt anyone can force you to sign anything. The question really is why wouldn't you want to. If you are the inventor why not take some credit? I suppose you could be trying to punish you old company, but having a patent on your resume is a plus. If they are willing to foot the bill to obtain a patent, I can't see any reason not to sign.

Do I own any right ? (I do not on the first patents that were filed on this invention, they were made during the course of my employment).

It probably depends on what your agreement was with the company when you were an employee. Most likely you signed an agreement assigning ownership of your inventions to your company as a condition of employment. This is pretty standard and understandable since you are being paid to do the work. In that case, the company would own it. Many companies provide some monetary incentives to inventors. If this were the case when you were an employee, then I'd certainly expect and would request you get it now if the patent is granted.

What if I'm trying to get back at my previous employer?

You didn't ask this question, but from your comments it seems you have an axe to grind with your previous employer. In that case what I might suggest is you tell them that you would be happy to sign, but not until you review the patent application for correctness. After all, your name is on the application as an inventor, you should want it to be correct. As an inventor you are uniquely qualified for the task. And, by the way, your fee for this task is 200 euros/hour (or whatever you feel is justified).

I'm answering as an inventor who has had patents issued since leaving a company. I am not an attorney so please don't take this as legal advice.

  • Thanks for your feedback. I guess when it comes a bit more complicated is that I have worked with this company in different locations under different contracts. the invention was when I was the UK, I made others that were patented during the time I was in Germany and I got a financial reward for that (I think it is a legal requirement in Germany), then I moved to Thailand where my new contract there said the other ones were "null and void" – user19665 Aug 30 '17 at 1:28
  • (I assume this means no more legal obligation between me and the UK/German entities). It ended up in a Mutual Separation (i.e. a disguised termination for no valid reason - they have used the "null and void" clause to avoid giving me compensations for the time I spent in the other countries by the way) - from then whatever I can do to NOT help them is welcome... – user19665 Aug 30 '17 at 1:28
  • @user19665 You might want to add some of this detail to your question. I'm in the US and imagine the circumstances may be different in other countries. – Eric Shain Aug 30 '17 at 2:05

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