Declaration - Inventor Signature

[aurias]

Kentucky, U.S.

This looks like a standard form of some kind, but I do want to understand before signing. I am an Electrical Engineer. At my former employer, I helped develop some IP that a couple of patents were filed on. I was sent these forms, with a request to sign, by the company's legal team/consultants. My question is simply: What are these declarations stating simply? I feel like it's requesting me release all "ownership" or rights to the patents, such that I can't later claim royalties on said inventions. Which, doesn't make sense, because I signed a pre-employment agreement about IP developed while I was an employee there. These inventions did not exist when I left, and where only in the conceptual design phase. As far as I know, the patents are just now being filed.

Am I making a professional/legal mistake by signing these? I don't want to be difficult, but I also don't want to screw myself over in some way I'm not seeing. Thanks in advance! Below is the text (redacted) from the forms I received (ASSIGNEE being my former employer).

[HR][/HR]

DECLARATION (37 CFR 1.63) FOR UTILITY OR DESIGN APPLICATION USING AN
APPLICATION DATA SHEET (37 CFR 1.76) AND ASSIGNMENT
Title of Invention: ______________________________________________________________
This declaration is directed to:
 The attached application, or
 United States application or PCT international application number __________________________
filed on ______________________.
As the below named inventor, I hereby declare that: (a) the above-identified application was made or
authorized to be made by me; and (b) I believe that I am the original inventor or an original joint inventor of a
claimed invention in the application.
WHEREAS, _____________________________________ (hereinafter referred to as “ASSIGNEE&#8221 having a
place of business at: ________________________________________________________________________
is desirous of acquiring the entire right, title and interest in and to said invention and in and to any Letters
Patent that may be granted therefore in the United States and its territorial possessions and in any and all
foreign countries;
NOW, THEREFORE, for good and valuable consideration, the receipt whereof is hereby acknowledged, and
for other good and valuable consideration, the undersigned inventor(s) do, by these presents do sell, assign and
transfer unto said ASSIGNEE, the full and exclusive right to the said invention in the United States and its
territorial possessions and in all foreign countries (including the right to claim priority under the terms of the
International Convention and other relevant International Treaties and Arrangements from the aforesaid
application) and the entire right, title and interest in and to any and all Letters Patent which may be granted
therefor in the United States and its territorial possessions and in any and all foreign countries and in and to
any and all divisions, reissues, continuations, substitutions and renewals thereof.
I hereby authorize and request the Patent Office Officials in the United States and its territorial possessions and
any and all foreign countries to issue any and all of said Letters Patent, when granted, to said ASSIGNEE as
the assignee of my entire right, title and interest in and to the same, for the sole use of said ASSIGNEE, its
successors and assigns, to the full end of the term for which said Letters Patent may be granted, as fully and
entirely as the same would have been held by me had this Assignment and sale not been made.
Further, I will communicate to said ASSIGNEE or its representatives any facts known to me respecting said
invention, and testify in any legal proceeding, sign all lawful papers, execute all divisional, continuation,
substitute, renewal and reissue applications, execute all necessary assignment papers to cause any and all of
said Letters Patent to be issued to said ASSIGNEE, make all rightful oaths, and, generally do everything
possible to aid said ASSIGNEE, its (his) successors and assigns, to obtain and enforce proper protection for
said invention in the United States and its territorial possessions and in any and all foreign countries.
I hereby acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C.
1001 by fine or imprisonment of not more than five (5) years, or both.
Inventor: _____________________________________________
Date: _____________________________________________
Signature: _____________________________________________

 

[Zigner]

This looks like a standard form of some kind, but I do want to understand before signing. I am an Electrical Engineer. At my former employer, I helped develop some IP that a couple of patents were filed on. I was sent these forms, with a request to sign, by the company's legal team/consultants. My question is simply: What are these declarations stating simply? I feel like it's requesting me release all "ownership" or rights to the patents, such that I can't later claim royalties on said inventions. Which, doesn't make sense, because I signed a pre-employment agreement about IP developed while I was an employee there. These inventions did not exist when I left, and where only in the conceptual design phase. As far as I know, the patents are just now being filed.

Am I making a professional/legal mistake by signing these? I don't want to be difficult, but I also don't want to screw myself over in some way I'm not seeing. Thanks in advance! Below is the text (redacted) from the forms I received (ASSIGNEE being my former employer).

[HR][/HR]

DECLARATION (37 CFR 1.63) FOR UTILITY OR DESIGN APPLICATION USING AN
APPLICATION DATA SHEET (37 CFR 1.76) AND ASSIGNMENT
Title of Invention: ______________________________________________________________
This declaration is directed to:
 The attached application, or
 United States application or PCT international application number __________________________
filed on ______________________.
As the below named inventor, I hereby declare that: (a) the above-identified application was made or
authorized to be made by me; and (b) I believe that I am the original inventor or an original joint inventor of a
claimed invention in the application.
WHEREAS, _____________________________________ (hereinafter referred to as “ASSIGNEE&#8221 having a
place of business at: ________________________________________________________________________
is desirous of acquiring the entire right, title and interest in and to said invention and in and to any Letters
Patent that may be granted therefore in the United States and its territorial possessions and in any and all
foreign countries;
NOW, THEREFORE, for good and valuable consideration, the receipt whereof is hereby acknowledged, and
for other good and valuable consideration, the undersigned inventor(s) do, by these presents do sell, assign and
transfer unto said ASSIGNEE, the full and exclusive right to the said invention in the United States and its
territorial possessions and in all foreign countries (including the right to claim priority under the terms of the
International Convention and other relevant International Treaties and Arrangements from the aforesaid
application) and the entire right, title and interest in and to any and all Letters Patent which may be granted
therefor in the United States and its territorial possessions and in any and all foreign countries and in and to
any and all divisions, reissues, continuations, substitutions and renewals thereof.
I hereby authorize and request the Patent Office Officials in the United States and its territorial possessions and
any and all foreign countries to issue any and all of said Letters Patent, when granted, to said ASSIGNEE as
the assignee of my entire right, title and interest in and to the same, for the sole use of said ASSIGNEE, its
successors and assigns, to the full end of the term for which said Letters Patent may be granted, as fully and
entirely as the same would have been held by me had this Assignment and sale not been made.
Further, I will communicate to said ASSIGNEE or its representatives any facts known to me respecting said
invention, and testify in any legal proceeding, sign all lawful papers, execute all divisional, continuation,
substitute, renewal and reissue applications, execute all necessary assignment papers to cause any and all of
said Letters Patent to be issued to said ASSIGNEE, make all rightful oaths, and, generally do everything
possible to aid said ASSIGNEE, its (his) successors and assigns, to obtain and enforce proper protection for
said invention in the United States and its territorial possessions and in any and all foreign countries.
I hereby acknowledge that any willful false statement made in this declaration is punishable under 18 U.S.C.
1001 by fine or imprisonment of not more than five (5) years, or both.
Inventor: _____________________________________________
Date: _____________________________________________
Signature: _____________________________________________

A review such as you are requesting goes beyond the scope of this (or any) internet forum. You will want to seek legal advice from an attorney in your unnamed state and/or country.

Edit: From your one other post, I see that you are in Kentucky.

 

[aurias]

A review such as you are requesting goes beyond the scope of this (or any) internet forum. You will want to seek legal advice from an attorney in your unnamed state and/or country.

Edit: From your one other post, I see that you are in Kentucky.

I edited that into my post. Copy and paste caused it to be overwritten.

I assumed as much. My only concern is that it could be tying my hands on anything I may develop in the future, either on my own, or with my new company. As for the IP previously developed, it's nice to have my name on the patents, but I'm not sure I care that much.

 

[quincy]

I edited that into my post. Copy and paste caused it to be overwritten.

I assumed as much. My only concern is that it could be tying my hands on anything I may develop in the future, either on my own, or with my new company. As for the IP previously developed, it's nice to have my name on the patents, but I'm not sure I care that much.

Whenever you are asked to sign a legal document, it is important that you fully understand what you are signing. This can be especially important when what you are being asked to sign involves intellectual property rights.

You might want to check out the America Invents Act before sitting down with a patent attorney in your area for a personal review of the document.

Good luck.

 

[FlyingRon]

Let me give you a small hint.

The USPTO will only issue patents to the actual inventors, not their employers. Many of us signed agreements where we agree to sign over the rights to any patents we develop in the course of our work. Indeed, the one patent I was on, I had to sign a similar form to officailly hand over my rights as I had already agreeed to do.

 

[quincy]

Let me give you a small hint.

The USPTO will only issue patents to the actual inventors, not their employers. Many of us signed agreements where we agree to sign over the rights to any patents we develop in the course of our work. Indeed, the one patent I was on, I had to sign a similar form to officailly hand over my rights as I had already agreeed to do.

The AIA modified the Inventor's Oath/Assignment in 2011. If an inventor assigns or, due to the nature of the job, is obligated to assign an invention, the one to whom the invention was assigned can file the patent application.

Here is a link to the USPTO's AIA Inventor's Oath or Declaration Quick Reference Guide:

https://www.uspto.gov/sites/default/files/aia_implementation/inventors-oath-or-declaration-quick-reference-guide.pdf

 

[aurias]

Let me give you a small hint.

The USPTO will only issue patents to the actual inventors, not their employers. Many of us signed agreements where we agree to sign over the rights to any patents we develop in the course of our work. Indeed, the one patent I was on, I had to sign a similar form to officailly hand over my rights as I had already agreeed to do.

I see. They're claiming this will not change my status or place on the patent at all (my name will still be on it), but it sounds like they are wanting all the rights to it. To do that, they need this second form to actually hand them over, even though I already signed something from the company stating as much... I don't care about royalties or anything of the sort, I don't even care so much about being on the patent, although it's kind of a neat thing to have, I just want to avoid any other sticky legal situations is all. I think I understand what's going on now! Thank you all for the input!

 

[quincy]

I see. They're claiming this will not change my status or place on the patent at all (my name will still be on it), but it sounds like they are wanting all the rights to it. To do that, they need this second form to actually hand them over, even though I already signed something from the company stating as much... I don't care about royalties or anything of the sort, I don't even care so much about being on the patent, although it's kind of a neat thing to have, I just want to avoid any other sticky legal situations is all. I think I understand what's going on now! Thank you all for the input!

I am glad you have a better understanding now of your patent rights and the rights of your employer to the inventions you created while under their employ.

When you create IP as part of your employment duties, the employer generally owns these works as a work made for hire (absent any agreement to the contrary).

You will be credited as creator of the invention but the patent belongs to your employer.

Good luck in your career.