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Who will be the assignee in such hypothetical situation?

Imagine a hypothetical situation where Alex works in company A and his friend Bob works in company B. One patentable idea came up from both of their minds while they were discussing and they two are the sole inventors with contribution weightage 50/50 (both friends agree).

I wonder which company should be the assignee of the patent if both of the companies A and B have strict signed policy that all the inventions of the employee will be owned by company under employment period?

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  • Were they at work being paid when the invention was conceived? If so, how did that occur if they’re at different companies? Zoom meeting? Are the two companies working together? There’s a lot more we need to know.
    – Eric S
    Mar 8, 2022 at 13:44
  • @EricS no they invented it in a casual coffee table friendly brainstorming ... No collaboration is between both companies. Mar 8, 2022 at 14:42

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If companies A & B are competitors, both company A and company B may have just cause to fire each of their respective coinventor employees for discussing subject matter that pertains to each company’s internal operations. I have personally witnessed a husband & wife fired for precisely this reason for discussing technical content of their jobs (at 2 competing employers) over the dinner table. You should take this topic over to Law.SE due to being fraught with more legal complications beyond mere patent assignment.

Conversely, if the 2 employees of different companies coinvent a better paperclip and neither company A nor company B are in any business even remotely related to paper or clips, then the 2 coinventors must apply to their respective employers for release of intellectual property rights to the better paperclip. Some employers might grant such a request.

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  • It can depend on the company and maybe even the state or country, but here in the US, companies don't own you 24 hours a day. If you invent something on you own time which is unrelated to the companies business, you shouldn't have to ask permission to do anything.
    – Eric S
    Mar 8, 2022 at 19:35
  • Some company agreements, allowed in some states, require that you must bring them anything you invent during employment for them to decide if it does or does not fall under your agreement. In California, for example, there are constraints on what an employee agreement can demand but that is not universally true.
    – George White
    Mar 8, 2022 at 21:59
  • @EricS, the employment agreements that I have signed over the decades as an engineer overtly state that all mental activity of a technical nature 24/7 is owned by the employer, due to inseparability of technical concepts intertwined with those in the workplace. Unless one of the parties to a contract in Texas is deemed by a court to be of unsound mind (or if the contract is ambiguous in wording, misspelling, and/or punctuation), Texas courts will be on the devil’s side enforcing the contract to the Nth degree if one sells one’s soul to the devil. Mar 8, 2022 at 22:36
  • There may be a difference between what an employment agreement states and what is legally enforceable. In any case you might possibly soften the statement in your last paragraph.
    – Eric S
    Mar 9, 2022 at 0:37
  • Strong precedent was set in the AlcatelUSA-v.-Evan-Brown (nee DSC-v.-Evan-Brown) case in the northern district of Texas (based in Texarkansas, serving the tech corridor north of Dallas County line). Brown invented a way to lift assembly language to C while driving 1 weekend on a roadtrip. DSC offered to pay Brown a hefty bonus, as DSC had much assembly language source code that they’d rather have in C. Brown found a French firm who’d pay him $2 million for it. In federal court, Brown was ordered to write down the gist of it; he refused, then lost his house to pay AlcatelUSA’s court expenses. Mar 9, 2022 at 12:54
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If both Alex and Bob were not working at the time and the invention is unrelated to their companies products, then likely neither company has any rights to the invention. In any case, consulting with a real live intellectual property lawyer is advised since the specific wording of their employment agreements matter.

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If the topic falls under the agreement Alex has with A, Alex assigns their rights to A. Otherwise Alex retains rights. If the topic falls under the scope of Bob’s agreement with B,then Bob assigns to B. Otherwise Bob retains rights.

If a patent were to issue, whichever two entities end up with the rights that originate with the inventors have equal rights to practice the patent including licensing third parties and keeping the money with no need to account to each other.

Even though there will be a joint ownership, to get a patent they would need to flip a coin or otherwise determine which will pursue the patent and deal with the patent office. The patent office will not deal with multiple parties during prosecution.

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  • Lets complicate it. By coin flip the patent is assigned to A and after that Bob switched job to A. Now technically the patent has no reference of B though the patent was invented by the inventor under Bs employment. How to deal this scenario? Is there any entry in patent beside assignee? Mar 9, 2022 at 10:02
  • The inventors will always be Alex and Bob. If B has agreed to risk its potential ownership on a coin flip and loses then it is no longer relevant. The coin flip idea between A and B is not a great solution. If it is a valuable invention one can buy the others’s rights.
    – George White
    Mar 9, 2022 at 16:14
  • The assignee listed on the front of the patent is not magic. There is a form that goes with the issue fee and whatever is filled in one spot goes on the face of the patent. Actual assignments of rights are not checked. In the case of A having Alexes rights and B having Bob’s rights I would put nothing in that box but be sure the two assignments were recorded with the USPTO recordation office.
    – George White
    Mar 9, 2022 at 21:35

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