0

Almost a year ago I worked at a small tech startup. While there I participated in the development of a way to extract data from OSI headers for networking applications in FPGAs.

I have since left that startup and now work at a different company, where I intended to use some of the ideas that I used at the startup for solving similar problems, but in a completely different domain (my old and new companies do not in any way compete). I have taken no source code with me. I only want to reuse some of these techniques that I used previously. I have in fact reimplemented much of this idea at my new company and am in the process of using it.

Unbeknownst to me in the year I have been away, my old company has apparently filed documentation to patent this idea. This morning my old boss contacted me an requested that I sign some documentation for the filing process. If I don't sign, my boss is likely going to be suspicious of why I am not willing to sign this patent, and why I would leave money on the table that he is offering.

The patent document is so broadly worded as to make me feel that I cannot extract data from OSI headers in an FPGA in any way such that I could not be accused of infringing on this patent. Personally I think patenting this is ridiculous. How can this possibly be so unique as to warrant a patent? But I'm not a lawyer.

So I am curious what the community might say about this. Do I just discard the work I have done at my new company?

  • Well, just because they apply for a patent, doesn't mean they will get it. And it might be considerably less broad when granted. But you might just want to ask your current boss and they might then ask their lawyers. – DonQuiKong Oct 4 at 5:50
  • It seems to me that having your name on a patent doesn't really mean anything anymore. It means that your company paid a lawyer $400 an hour to dress up some uninspired idea with the right language to make it sound impressive enough so some uninformed person at the patent office will just rubber stamp it through. You should see some of the other parents my old company has successfully filed. – dolby Oct 4 at 12:43
1

Most likely you signed an agreement when you joined your old company that assigns all relevant inventions you made while at the company to the company. That agreement also most likely included an agreement to cooperate with the filing of any applications. Now they are asking you to follow through on that agreement and sign a patent application and possibly an assignment agreement. After the AIA law went into effect, it is pretty easy for the company to file an application without your signature after they try to contact you to get you to sign but it is a little better for them to get the inventors' signatures.

The description in the specification of the patent may sound broad, but what counts is the wording of the claims. The claims they are filing may be broader than the claims they eventually get, if they get a patent at all. The claims may be for a very specific application of the technique you developed or it might be very broad.

Your new employer would not appreciate you developing a product that is later found to infringe and it could be as long as three years from now when a patent issues. This is a difficult situation. You might consider bringing this up in a very general way with attorneys at the new company. Or you could stay as far away from using the technology as possible at least until a patent issues.

  • It might be a good idea to consult with the new companies attorneys. I see no reason to keep them in the black on this. – Eric Shain Oct 4 at 18:19
  • I almost mentioned that but until the patent application is published, the information might be considered confidential by the old company. Asking the old company if the new company can see the application is a possible solution but it seems like it might be awkward. – George White Oct 4 at 19:36
  • You could tell the gist of the issue to the new companies lawyers without showing them the application. – Eric Shain Oct 4 at 20:41
  • 1
    Thanks - added it to answer – George White Oct 4 at 23:38
-1

I think there are two different issues relating to your question.

Concerning the filing of the patent application and as pointed out by @DonQuiKong, this does not mean that they will get a patent granted. The patent application is subject to examination and the invention must be novel and non-obvious to be patented. Depending on both the state of the art and the interests of the company, the scope of protection conferred by an eventual patent will be broader or narrower. In fact multiple patents may arise from a single patent application, so one has to monitor how the patent application(s) are prosecuted (this is public information after 18 months) to see if it is likely that the may get patents for the invention.

Now, if you have been contacted by the company and you are to sign some documents, probably that means that you are considered by them as an inventor of said procedure. You own patents rights for that patent application, and in the US the company does not have the rights to the patent application unless the inventors assign them to the company, and I guess that is what they are actually trying to do by requesting you to sign the documents. If you do not sign the documents, it becomes problematic for the company to get the rights to the patent application. That would be a reason why they are offering you a sum of money as well.

Then the second issue is whether you are able to use part or the totality of the procedure in a new company. If they get the patent granted, then they can enforce their rights and stop you from using that procedure as long as the procedure you are using is protected by the patent. You mention that you are reusing some techniques, so that may result in a new procedure not falling within the scope of protection conferred by the patent. But another important point is whether you signed some contract in the former company stating that you were not to use, during a certain period of time or while working for a different company, knowledge you gained while working for that former company. In that case, irrespective of the fate of the patent application, you may not be using certain techniques you developed back then.

  • The company most likely already has the rights to your invention. It is very standard practice in the US for companies to require assignment of inventions in advance. – George White Oct 4 at 17:02
  • Every company I've dealt with either as an employee or as a consultant has specified that they own any IP generated by me as part of my employment. As George White says it is the standard practice in the US. – Eric Shain Oct 4 at 18:18
  • Do what does it mean, then, to be an engineer and gain experience if not to reapply techniques and skills you have learned to new situations and problems? I have had to sign standard "we own you" type agreements throughout my career, but I always thought that really meant I can't do something at one company them take a job the a competing company and use the same techniques. Which I'm not doing here. – dolby Oct 4 at 18:40
  • @dolby What it means, is that while being paid for work, the work product is owned by the company. If you invent something while on the job, the company owns the intellectual property generated (such as a patent). It doesn't mean they own you or your experience. However if a patent is obtained, then other companies can't infringe on the patented technology. Thus even if you are the inventor, you can't use your patented technology at a different company. You also generally have to avoid disclosing "insider knowledge" of your previous company to your new one not otherwise publicly available. – Eric Shain Oct 4 at 21:53
  • @GeorgeWhite It is standard practice in Europe as well, and unless I am mistaken, in the US you still have to sign the assignment of the patent applications. Usually at the EPO you do not have to provide said assignment unless the inventor is not an employee of the company. – the Europeist Oct 5 at 8:05

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.