Do I have the right to patent something?

[apmntm]

I just noticed the quoted text on my employment agreement, under Intellectual Property clauses and it's giving me headaches:

"...you agree that the Company acquires by virtue of the employment relationship all intellectual property right to all writings, products, developments, software or services (called the "Works") which you make, conceive, discover or develop at any time while you are employed by the Company, whether during working hours or at any other time, which relate to or are used or intended for use in connection with any business carried on by the Company..."

Does the above text means that I am not allowed to start working on any patent documentation, while I am their employee?

If so, what should I do? Should I request a change in the agreement?

Thanks!


What is the name of your state (only U.S. law)? Washington

[divgradcurl]

Does the above text means that I am not allowed to start working on any patent documentation, while I am their employee?

This is really standard stuff. It means that anything you invent while on company time (essentially, "within the scope of your employment") belongs to the company. It also means that anything you invent while an employee -- whether or not on company time -- that is related to the business your employer is in belongs to the employer as well. How broadly enforceable this clause might be will require an analysis of your state's laws.

If so, what should I do? Should I request a change in the agreement?

Depends. If your invention is in any way related to the work your company does, you are likely sunk. An employer is unlikely to negotiate away their rights to your invention so easily.

If the invention in question is unrelated, then your best bet is to either quit, or to talk to your employer and see if they will waive, in writing, any interest that they might have in your invention.

[apmntm]

Originally Posted by divgradcurl

If the invention in question is unrelated, then your best bet is to either quit, or to talk to your employer and see if they will waive, in writing, any interest that they might have in your invention.

What if I start working and keeping the inventor's log right now, wait until I have the draft for the non provisional application, then quit and only after that submit the application?

Doesn't sound like a solution to me...

[divgradcurl]

Originally Posted by apmntm

What if I start working and keeping the inventor's log right now, wait until I have the draft for the non provisional application, then quit and only after that submit the application?

Doesn't sound like a solution to me...

Is the invention related to your employment in any way?

[apmntm]

Originally Posted by divgradcurl

Is the invention related to your employment in any way?

I think this is hard to decide, since my invention will address all ecommerce website and they have one. But the invention is not addressing only their ecommerce industry, but all of them.

Let's say the have an ecommerce web site that sells cars and my invention doesn't mention or relates at all to the term car.

APMNTM

[divgradcurl]

Don't look at this so narrowly -- your company certainly won't. If your company is in the ecommerce business, and your invention is related to ecommerce, I am certain that if you asked your company, they would believe it is related, and that they own it.

Here's the main problem you are going to have going forward. If this invention is successful, your current employer is going to do the math, and see that the timing of when you invented your invention and when you were employed are very close together in time. If your invention is successful enough, your former employer may decide to file a lawsuit against you to quiet title to the patent -- basically, a suit saying that they are the rightful owners to your invention. As part of the lawsuit, they are going to be able to obtain all of your records and inventors notebooks, and if they can prove that you invented the invention while employed by them, they will obtain the rights to the patent.

And yes, this happens -- I personally have worked on lawsuits related to this issue.

To have any hope at all, you really only have two choices. First, you can go to your employer, and see if they are willing to sign over any rights they may have to the inventions. If your invention is not part of their core business plan, and if you are willing to grant them a license to use your patented invention (assuming the patent issues eventually), you never know, they might be willing to sign over rights.

Your other choice is to quit, and then begin working on the invention after you've left your current company. This still may be iffy if you've done any significant development work already, because most companies require you to disclose any inventions you came up with as part of your exit interview, and you don't want to leave a paper trail of lies behind you...

[apmntm]

Originally Posted by divgradcurl

Your other choice is to quit, and then begin working on the invention after you've left your current company. This still may be iffy if you've done any significant development work already, because most companies require you to disclose any inventions you came up with as part of your exit interview, and you don't want to leave a paper trail of lies behind you...

Being still in the stage of an idea (just in my head) and nothing more that this (i haven't even yet ordered the inventor's notebook) will be a problem?

I think the best way is to cancel the contract with them and only then start working on the invention.

What do you suggest?

PS:What was the decision in the case you've worked on?



Thanks