assignment of inventor rights

[ernestowynn]

What is the name of your state? Texas

I have worked with a company as a partner for the past three years in which I provide my business ideas, inventions, marketing plans, selling strategies, etc and the partner provides the capital and the back-end production of products. our agreement consists of the above and the split on the profits were agreed to 60/40 split where I received 40% of the profit. I introduced a new invention and during the patent completion, the partners wanted to drastically reduce my % from 40% to 5%. As a result, this no longer made good business sense for me to continue with this relationship and I no longer work with them on any projects. They have now filed for a non-provisional patent and have asked me to assign my rights as the inventor to them for $1. We have no agreements in place at all related to how we conduct business with one another and I am not interested in assigning the inventor rights. I received an email requesting me to assign and I have not replied as I would like to know if there is anything I'm missing here related to why I would be obligated/required to do this. - I do intend to use parts of my invention in the development of products.

 

[quincy]

What is the name of your state? Texas

I have worked with a company as a partner for the past three years in which I provide my business ideas, inventions, marketing plans, selling strategies, etc and the partner provides the capital and the back-end production of products. our agreement consists of the above and the split on the profits were agreed to 60/40 split where I received 40% of the profit. I introduced a new invention and during the patent completion, the partners wanted to drastically reduce my % from 40% to 5%. As a result, this no longer made good business sense for me to continue with this relationship and I no longer work with them on any projects. They have now filed for a non-provisional patent and have asked me to assign my rights as the inventor to them for $1. We have no agreements in place at all related to how we conduct business with one another and I am not interested in assigning the inventor rights. I received an email requesting me to assign and I have not replied as I would like to know if there is anything I'm missing here related to why I would be obligated/required to do this. - I do intend to use parts of my invention in the development of products.

You might find you are under an obligation to assign rights to the invention because of the terms of your employment. Whether you are due compensation depends on how you were paid by the business (e.g., were you paid to invent?).

Here is a link to section 118 of the America Invents Act, Filing by other than inventor:

https://www.law.cornell.edu/uscode/text/35/118
I recommend you consult with a patent attorney in your area to see what your best course of action is, after the attorney has had a chance to personally review the facts of your employment.

 

[FlyingRon]

Absent an specific agreement or a specific work for hire situation (i.e., you were an employee), there's no obligation to sign over all the rights without real compensation. Of course, unless you can come to an agreement, there may be litigation to ensue.

 

[quincy]

Absent an specific agreement or a specific work for hire situation (i.e., you were an employee), there's no obligation to sign over all the rights without real compensation. Of course, unless you can come to an agreement, there may be litigation to ensue.

There could be an obligation. It depends on the business arrangement.

 

[FlyingRon]

That was what the first four words of my post said.

 

[LdiJ]

There could be an obligation. It depends on the business arrangement.

I understand the point that you are making, but I have read the original post several times and I see nothing that would indicate that he was inventing on behalf of the other company. It sounds more like he had inventions and ideas that he did not have the capital to produce and therefore entered into a somewhat loose arrangement with someone who did.

They also wouldn't be asking him to assign the rights to them if they owned the rights to the invention themselves.

 

[LdiJ]

What is the name of your state? Texas

I have worked with a company as a partner for the past three years in which I provide my business ideas, inventions, marketing plans, selling strategies, etc and the partner provides the capital and the back-end production of products. our agreement consists of the above and the split on the profits were agreed to 60/40 split where I received 40% of the profit. I introduced a new invention and during the patent completion, the partners wanted to drastically reduce my % from 40% to 5%. As a result, this no longer made good business sense for me to continue with this relationship and I no longer work with them on any projects. They have now filed for a non-provisional patent and have asked me to assign my rights as the inventor to them for $1. We have no agreements in place at all related to how we conduct business with one another and I am not interested in assigning the inventor rights. I received an email requesting me to assign and I have not replied as I would like to know if there is anything I'm missing here related to why I would be obligated/required to do this. - I do intend to use parts of my invention in the development of products.

You cannot just ignore them at this point. You have to say yes or no, and if no, that you are reserving the invention for your own use.

 

[ernestowynn]

I understand the point that you are making, but I have read the original post several times and I see nothing that would indicate that he was inventing on behalf of the other company. It sounds more like he had inventions and ideas that he did not have the capital to produce and therefore entered into a somewhat loose arrangement with someone who did.

They also wouldn't be asking him to assign the rights to them if they owned the rights to the invention themselves.

This is correct, the partner was a previous supplier of mine. The goal was to combine my business and innovation with their ability to support the production and then we share in the profits. there was no agreement in writing nor verbal.

 

[quincy]

This is correct, the partner was a previous supplier of mine. The goal was to combine my business and innovation with their ability to support the production and then we share in the profits. there was no agreement in writing nor verbal.

You should review your rights to the invention with a patent attorney in your area, then.

You mentioned a partnership. If you did not receive an income from the business and your role in the business was not to invent, and if the invention was your work alone, you should be able to successfully argue that you are sole owner of the patent.

 

[ernestowynn]

You should review your rights to the invention with a patent attorney in your area, then.

You mentioned a partnership. If you did not receive an income from the business and your role in the business was not to invent, and if the invention was your work alone, you should be able to successfully argue that you are sole owner of the patent.

I was extremely troubled with their objective during the documenting of the conversion as they wanted to leave my name off as the inventor yet i'm the person who was the sole inventor (and the inventor on the provisional...) and when I spoke up that this is not right, they backed off. They added another person to the filing even though they had truly no contribution to the invention. As you can likely tell, this is why i'm no longer in a business relationship with them.

 

[quincy]

I was extremely troubled with their objective during the documenting of the conversion as they wanted to leave my name off as the inventor yet i'm the person who was the sole inventor (and the inventor on the provisional...) and when I spoke up that this is not right, they backed off. They added another person to the filing even though they had truly no contribution to the invention. As you can likely tell, this is why i'm no longer in a business relationship with them.

You will want the facts surrounding the invention, and how it came to be, personally reviewed by a patent attorney in your area.

 

[ernestowynn]

Thanks for all the input! I contacted a patent attorney and discussed. he suggested that I request from them documentation of my agreement to assign and await their reply.

 

[quincy]

Thanks for all the input! I contacted a patent attorney and discussed. he suggested that I request from them documentation of my agreement to assign and await their reply.

You're welcome. We appreciate the thanks, earnestowynn, so thank you.

I think the patent attorney you spoke to gave you a smart first step to take.

Good luck.