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I am a 3D designer (SOLIDWORKS, AutoDesk, etc...) who does product design, mechanical engineering, 3D modeling for people with ideas for new products. I previously worked at a state educational institution where I was put on two patents, but am now thinking of launching my own company.

My question is as follows: If someone comes to me with an idea, and they want me to do the design, prototyping, and provide manufacturing files, is it reasonable for me, in addition to my standard labor and materials costs, to ask a small percentage of the patent? Is this common practice?

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    related: patents.stackexchange.com/q/17284/18033 – DonQuiKong Sep 15 '17 at 15:32
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    Short answer: it is unreasonable. Unless you had the novel idea yourself, you aren't the inventor. Patent lawyers spend hours writing up the patent, but they don't ask for a cut of the profits too. – Eric Shain Sep 15 '17 at 17:57
  • Thank you DonQuiKong... I did a little digging and didn't find that specific posting. Very helpful. – Golightly Sep 16 '17 at 17:37
  • Patent attorneys don't want to defer billable hours for a piece of the patent because there are no guarantees any given invention will succeed or be profitable. (Bird in the hand--they got families to feed.) But, it's not unreasonable for you to ask for a equity in the company, so long as you are willing to defer some of your compensation for that equity. (Whether the company wants to give you equity depends on the structure, and the trend has moved away from this in general. But if it's a small startup and they have a tight budget, and they trust you, they might be willing to cut you in.) – DukeZhou Apr 25 '18 at 16:00
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You can always try to negotiate the terms of your contract. However, I doubt anyone would hire you on the basis of a paying you for your time and also getting a fraction of the patent earnings. The standard consulting agreement essentially says "I hire you to do work and I own the work product". Normal design engineering and modeling of an idea brought to you wouldn't amount to the inventive step so you wouldn't be an inventor in any case. If you were to extend the idea in a way that becomes inventive, you would probably be added as an inventor on the patent application. Even then, the company who hired you would own the work product and would have no reason to cut you in on future earnings from the patent. It is possible some small companies might agree to pay you a royalty on earnings, but only on the basis of paying you less (or nothing) for your work up front.

  • That makes sense. I will be making recommendations on how things might be achieved in a better manner, but will not be changing anything integral to the idea or its implementation. – Golightly Sep 16 '17 at 17:41
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Product design, mechanical engineering, and 3D modeling is work for hire and not part of the inventive process unfortunately. Does it add value? Yes. Does it add more value than you charge for your services? Maybe. Makes a good selling point but it doesn't change things. It's still work for hire. Inventing is outside the scope of the work requested. But if you do invent something in the course of your work and/or you are required to deliver inventive work to complete your agreement then you should consult a lawyer.

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Common to all jurisdictions (as far as I am aware of): It all depends on who commissions the drawing, and how. If the client makes you, the designer, or the firm that will come up with the drawing sign a work for hire clause, or any clause really that all works produced are owned by the commissioning party, then unfortunately you have no say over the published drawing's origins.

In any case, the designer of a drawing would probably have a really hard time arguing in court that they had the original idea for the drawing, since at that point the patent would be approved for a lawsuit to even be worth it.

Then I (as someone who has commissioned designers in the past), would argue that there is a moral argument against the designer seeking ownership over a client's patent. Technically, as a designer you are being asked to fulfill a role in the application process, unless you were part of the team or group that came up with the invention obviously. If the later isn't the case, then you are in a position where the best tool to fight a patent in court would be to seek a prior art argument.. which is inherently going against the service you provide as a designer since you would have to prove that what you actually put on paper was not original. This would imply that you did not do your own due diligence in drafting the patent drawings which, depending on who you face in court, could find you in hot waters.

Additionnaly, going through this route would also mean that you'd be undermining your professional credibility if you actually do find prior art to your OWN drawings. This creates a precedence around you that what you produce might not actually be original or performed in the interest of your client. So really, a form of career suicide..

Again, if this is something you absolutely want, then you should bring it up, especially if you actually end up bringing feedback or positive alterations to the original inventions. However, this is still tricky, since that final decision is at the discretion of your client, which can very well walk out the door to another designer who wont ask this of them.

To balance out my point though: you could always, if dealing with a startup for example and if you have authority to make this kind of arrangement, ask for small equity in your client's project/company if they can't afford paying your for perpetual licensing royalties; ask for name recognition somewhere or work references etc. You can be creative, as long as your client is too and agrees to put it in writing (very important).

  • Thank you very much for the reply. I'm not attempting to be greedy by any means, I am well compensated, just didn't know if it was common practice for the engineer to be on there or not, or if I was failing to do my due diligence by NOT asking for a share. Thanks! – Golightly Sep 16 '17 at 17:39
  • No trouble, but it isnt a dumb question to be honest. It's really a subjective matter in the end, so asking for it depends on who's involved! – murphguy Sep 16 '17 at 17:40

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