1

Let’s say I have generated an interesting idea alone and submitted to my current company to proceed patenting and the company rejected my idea to patent because they think the idea is not worthy. Now, if I resign from my company and start a startup based on that idea is it legally prohibited as I have generated the idea under the companys employment?

If that question is more suitable for law.SE please let me know in comment before downvote so that I can migrate quickly.

2 Answers 2

2

The general rule (and I am not a lawyer) is that when you work for a company, the company owns your work product. Thus is you invent something while at work, your company owns the invention. They are not obligated to pursue a patent. It depends on your work contract, so you should determine what is in that. Now if they really don't think the invention has merit or isn't in their business interests, then they may be willing to give you permission to pursue it independently. You'll have to ask them.

Note that I used the word invention, not idea. Ideas generally aren't patentable, actual implementations may be. Someone might have an idea of a flying car. That wouldn't be patentable. The actual technical implementation of a way of making a flying car might be patentable if it is novel over prior art. Thus, if you only really have an idea and not an implementation, you could quit and then develop the implementation independently and probably patent that. It gets tricky if you are using proprietary knowledge so you might want to consult with an attorney.

In any case, this has more to do with employment contracts than patents and you might want to pose questions about that on the Law SE site.

2
  • If I post this question in LawSE (as you suggested), will it be reported as cross-post? I don't want to delete this post as there are contribution (answers/comments) of people. Mar 9 at 10:10
  • 1
    @SazzadHissainKhan You'll want to tailor the question to the site. Here is a good place for questions specifically about patents and patenting. Law SE would be appropriate for questions about employment contracts (for example) or perhaps how you might structure an agreement with your employer to gain ownership of the invention.
    – Eric S
    Mar 9 at 16:38
0

To keep the question within scope for AskPatents, let’s focus on assignment of a patent to the employer.

  • If you are truly the sole inventor, then look at the wording of your employment agreement. If it says that the company must be assigned (i.e., become the owner of) any patent arising from your duration of dates of employment, then you must assign the patent application and/or granted patent on this invention that you file long after your employment there ends.
  • If at least 1 of your coworkers is a coinventor in any way and if any such coinventor remains an employee at that employer long after your employment ceases, then the employment agreement of that coinventor still employed there is in effect regarding that patent application much the same as if you were still employed there: it must be assigned to (i.e., owned by) the employer.
  • You could listen to your employer’s patent committee regarding their reason for rejecting the pursuit of patenting your idea. Sometimes the rejection isn’t that the idea isn’t patentable nor monetarily valuable; sometimes the rejection can be due to difficulty in enforcing a granted patent if the process or apparatus that is patented is buried so deeply within a system’s innerworkings that it is difficult to determine whether a infringer is actually infringing. If this is the reason for the patent committee rejecting pursuit of a patent for your process or apparatus, then work intensely on how to make this hidden gem more externally visible in the system.
  • Often employees think that they have invented something only to find out that the empoyee has only a nebulous idea as a goal but without the actual process or apparatus needed to reify the laudable goal to be an extant reality. If this is the reason given as feedback by the patent committee, then work diligently on the actual process steps or the actual apparatus needed to actually reify the formerly-nebulous goal.
  • If you are the sole inventor who is “in possession of the invention” (i.e., you know exactly how to make the invention real) and if none of your employer’s current and future products incorporate that invention, keep improving your invention in silence outside of work so that the invention as it currently exists morphs into something even better that your current employer cannot lay obvious claim to (or that they might not even recognize). Then patent the drastically improved derivative when you work somewhere without such an uncooperative patent committee.
4
  • 1
    The case that the inventor, long after his employment ends, would spend the money and time to file an application that needed to be assigned to the company is very, very unrealistic. The advice to keep working on it while employed and exploit it after leaving is advice to defraud the company.
    – George White
    Mar 8 at 3:12
  • @GeorgeWhite, the company in effect said that the invention is worthless to them (if as I conditionally categorize: the company neither patents it or productize it in any way). I’d have to check various jurisdictions of law to see whether fraud can materially occur when the party allegedly defrauded has previously claimed in writing that the subject matter of the fraud has zero value (or has zero perceived value to them). Mar 8 at 3:35
  • If the inventor got a letter from the company that said he could do what ever he liked with it, great. Just saying, in effect, "we do not wish to spend the time and money to patent it now", is not the same.
    – George White
    Mar 8 at 3:39
  • But fraud was too strong.
    – George White
    Mar 8 at 6:02

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .