2

First off sorry if this isn't the right place, I am new here. I took a job creating a computer program for a client. No formal contract was signed, though he did agree to pay me a flat rate. I gave him the completed program and then he asked me to sign a contract. I declined as there were a lot of unfair things in the contract, like having to do repairs for free.

Now he has told me that he has trade marked the name, and patented the program. He says that if I ever reuse any part he will sue me, and if he find any part of the program being given away or sold he will sue me. Is this possible? How can I tell if a patent is pending or has been filed? It seems unlikely to me as it's been less than a month since this transpired. I'm in Canada and the client is in the Republic of China. What do I need to ask him for to check, a patent number or something?

  • In general, computer programs are not patentable, but are protected by copyright. – Eric Shain Sep 28 '17 at 14:03
  • @EricShain that was my understanding, but wasn't sure if it was true in China. – Donttryit Sep 29 '17 at 7:24
  • You may want to consider filing the document with the copyright office in the US and other major markets (costs about $35 in the US and takes only a few minutes to file electronically: copyright.gov/registration) This way, if they ever release in the US or markets where you have a copyright for the source code, you could cause the IP thief problems, or force them to pay you to grant rights to use the copyrighted code. You don't have to notify the malefactor that you'd done this, and I'd definitely recommend "flying below the radar" in that regard to avoid action on their part. – DukeZhou Oct 4 '17 at 17:45
1

There are several resources for checking published patents and applications (espacenet, google patents, uspto, wipo, ...), the problem is that applications are published normally after 18 months. So you cannot find it yet, even if it was filed.

On the other hand, it has not been granted yet, so there are no patent rights (from this situation) impeding you from doing anything.

A trade mark for the name might be possible, there is a database somewhere, but I don't know enough about trademarks.

But another thing is, there is no global patent or global trademark, so he would have to file in each country separately (the patent cooperation treaty allows doing that easier) and pay the fees in each region and get the patent granted in each region in which he wishes to have protection. > Time + money.

And, in the USA at least, it's illegal to name the wrong inventor, so apart from your rights to the patent, if you can prove you're the inventor, that's another point against them. Canada probably has something similar.

So, in short: Theres nothing granted and nothing you can find, if you want to do something you would have to sue, however from Canada to China ... well .. not so easy. Check again in 18 months if you think he is not bluffing or ask for a copy of the application.

  • So if I understand you correctly, the patent can't possibly be in affect as it takes 18 months to process? Or are you saying it takes 18 months to be found on public search engines? – Donttryit Sep 28 '17 at 7:10
  • @Donttryit the patent office publishes it after 18 months or when it is granted. I haven't heard of patents being granted faster than those 18 months. It might be possible, but very seldomly. And not after 1 month (nor nothing near). So no search engine can find it yet. – DonQuiKong Sep 28 '17 at 8:13
  • "ask for a copy of the application." he sent one with everything censored out. I don't know if this is normal or reasonable because this is a subject I know little about. – Donttryit Sep 29 '17 at 7:29
  • @Donttryit he doesn't have tp sent out anything. However, if the copy contains the application number and you can prove you're the inventor and have the rights, it allows you to act, if you want to sue for ownership of the patent application. – DonQuiKong Sep 29 '17 at 7:33
  • @Donttryit just to state this clearly - you have every right to get paid and can even take the patent (or application) away from him. If you can prove it is yours and some more legal stuff about contracts - but in general, if it's worth it to you, you should contact an attorney. – DonQuiKong Sep 29 '17 at 11:14
1

It sounds like he is pulling a snow job on you. For one thing you can't patent a software program. What you might be able to patent is a specific algorithm as applied to a specific use. In that case, the patent would be defined by the claims and wouldn't cover every part of the program. In any case, as DonQuiKong stated, if there is an application for a patent, it won't publish for 18 months and the patent itself, should if ever be granted, probably won't grant for 3 years or more from the filing date. If a patent does issue, it can be enforced back to the filing date. I reiterate, for the patent to be valid in the US, you would need to be named as the inventor and since he can't prove you ceded your rights to you, it is pretty questionable that he would be able to win a lawsuit.

Computer programs are generally protected by copyright. Questions about copyright are not covered in this site so you might want to try the Law SE site. I am not a lawyer so please don't take this answer as legal advice. Indeed if you feel the program is valuable, you may want to consult with an attorney.

  • Forgive my lack of knowledge of patenting but what does it mean for a patent to be published? Does it mean once published no one can copy it but before, anyone can? – Donttryit Sep 29 '17 at 7:27
  • @Donttryit it means it gets publicly readable. Before that its secret. That's the only change. – DonQuiKong Sep 29 '17 at 7:32
1

As DonQuiKong notes, if there is no patent publication or the product is not publicly available with a "patent pending" notice, there is nothing stopping you from freely releasing the software. However I would caution you that if the malefactor has financial resources, they could sue you regardless of the merit of the suit. Baseless legal actions and suits are a pretty common strategy.

What you should definitely do is keep records of the entire interaction, emails, source code, etc. Although this sounds like 'work for hire', and for that reason it's probably best to just walk away and take it as a learning experience, if a patent application did appear, you could look to provide the patent examiner with the evidence the thief is not the inventor, and throw a wrench in their scheme.

As general advice, in future get a contract before you engage in work-for-hire, and also think about asking for 50% up front.

PS If this software turns out to be lucrative enough that the IP thief becomes a target for well funded competitors, and the IP thief has a patent grant or patent pending that renders the processes proprietary, you could certainly provide your evidence to the competitors to use against the malefactor.

1

Beware that you may not have the legal standing to get either a copyright or a patent. For co pyright standing you need to check the correspondence that you did not agree to produce the programme under a hire contract. If you have done so the copyright is of the hirer. You have only the right to sue for the contract amount and damages. In a patent application the hirer may name you as the inventor but himself as the assignee.

Regards

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.