Assignment of patent ?

[BigCoEmployee]

What is the name of your state? CO

Company I work for incents creation of IP. Asking now for assignment of patent rights to company which no problem. Asking to sign that I will be available at any time upon request to work on this patent if required without additional compensation which if an employee of company I don't have an issue. My problem is what if I'm no longer an employee? I don't want to be bound to additional work and if I agree to help would want compensation.

Any advice on if I need to sign this agreement as is or can I demand that it be changed to remove this additional work provision if no longer an employee?

 

[Veronica01]

You certainly can make your proposal to modify/amend the contract before you sign it. You may face one of two possibilities:

1. Some compromise will be accomodated.

Or

2. They may not agree and tell you take it or leave it, in such a case make your own judgment as to what to do.

 

[divgradcurl]

BigCoEmployee,

What the company is asking for is that if you leave the company before the patent issues, you will still be available to read and sign any documents relating to the patent. I used to work for a company that did this, and I ended up reviewing and signing documents -- which didn't take much time -- long after I left the company, and the last patent I worked on didn't issue until I had been gone from the company for more than 2 years...

It's not like they want you to do any further experimentation, just review and sign documents -- chances are you won't have to anyway, if the initial application has alredy been sent to the patent office.

If you refuse to sign, the company can do whatever it wants, including firing you. It will not affect the patent -- if you refuse to sign any paperwork associated with the patent, the assignee (the company) can file paperwork to have the patent process go forward without your signature. The paperwork can be a pain, and will cost time and legal fees to accomplish, but can be done -- so don't think that you have a lot of leverage just because you are a named inventor on a patent.

Just sign the paperwork.