Dear forum members,
I find myself in a situation whose dimensions I do not fully understand. Therefore, I’m posting to this forum to benefit from the collective wisdom of the experts here.
Last year, I conceived a technical invention that I believe can have really wide applications. I work for a Fortune 500 company, so I disclosed my invention as per the internal protocol. Subsequently, the invention was filed for patent protection (USPTO) in my name but licensed to my employer. The patent has not yet been granted.
While the employer I work with is very innovation-friendly, I believe my invention doesn’t exactly align with their current business priorities. I am apprehensive that in the longer run my invention might become just another patent in their already formidable IP portfolio. They did realize it was worth protecting (and I am grateful to them for that), but they may not help me realize its full potential.
I am aware of some exciting startups and small companies that are working on the exact type of problems that my invention solves. Some of these companies might be able to bring my invention to life for the greater good. In a completely legal way, I want to talk to some of these companies and check if they find my work interesting.
Here are some questions I have:
* Assuming it is clear that my invention won’t find favor with my current employer beyond a certain point, can I go out and pitch it to other companies?
* Assuming another company is interested in my work, how can they legally bring me on board and also “acquire” the invention? As I shared, the patent hasn’t yet been granted; yet the invention is technically my IP licensed to my current employer. I am ready to talk to my current employer about this when the time is right.
* Assuming that’s the right thing to do, how do I really go ahead and talk to these smaller companies? Send cold emails?
* I am not based in the USA or a US citizen. Will that complicate matters — legally speaking and in terms of these companies wanting to work with me? I am based out of a country completely friendly to the US and not under any trade restrictions.
I’m aware what I am thinking of might not be easy to pull off, but aren’t all things worthwhile that way? And, just to reiterate, I plan to operate completely within the framework of the applicable laws.
Your advice is greatly appreciated.
AP
I find myself in a situation whose dimensions I do not fully understand. Therefore, I’m posting to this forum to benefit from the collective wisdom of the experts here.
Last year, I conceived a technical invention that I believe can have really wide applications. I work for a Fortune 500 company, so I disclosed my invention as per the internal protocol. Subsequently, the invention was filed for patent protection (USPTO) in my name but licensed to my employer. The patent has not yet been granted.
While the employer I work with is very innovation-friendly, I believe my invention doesn’t exactly align with their current business priorities. I am apprehensive that in the longer run my invention might become just another patent in their already formidable IP portfolio. They did realize it was worth protecting (and I am grateful to them for that), but they may not help me realize its full potential.
I am aware of some exciting startups and small companies that are working on the exact type of problems that my invention solves. Some of these companies might be able to bring my invention to life for the greater good. In a completely legal way, I want to talk to some of these companies and check if they find my work interesting.
Here are some questions I have:
* Assuming it is clear that my invention won’t find favor with my current employer beyond a certain point, can I go out and pitch it to other companies?
* Assuming another company is interested in my work, how can they legally bring me on board and also “acquire” the invention? As I shared, the patent hasn’t yet been granted; yet the invention is technically my IP licensed to my current employer. I am ready to talk to my current employer about this when the time is right.
* Assuming that’s the right thing to do, how do I really go ahead and talk to these smaller companies? Send cold emails?
* I am not based in the USA or a US citizen. Will that complicate matters — legally speaking and in terms of these companies wanting to work with me? I am based out of a country completely friendly to the US and not under any trade restrictions.
I’m aware what I am thinking of might not be easy to pull off, but aren’t all things worthwhile that way? And, just to reiterate, I plan to operate completely within the framework of the applicable laws.
Your advice is greatly appreciated.
AP
