employer/employee rights when starting patent process

[tHEPERFESSEr]

What is the name of your state? Missouri

I have an idea for what i believe to be a design patent (although i believe a service mark and or copyright may also come into play). I remember reading in a Nolo Press book about intellectual property rights that all intellectual property rights could be "assigned" after the fact...to whomever my employer might be at the time of filing? This idea of mine has absolutely no bearing on the type of work I am currently engaged in. Can someone help me out and clarify for me on this??

Thank you. KC

 

[divgradcurl]

Well, any IP rights can be "assigned" -- what you are wondering is whether or not they HAVE to be assigned. And to determine that, you will need to look at whatever contractual obligations you have with your emploer. Many employers require there employees to sign over the rights to any IP they develop while working for a company -- if that's your case, that's you answer.

Now, even if you are contractually obligated to sign over your rights, the company may not require it if the IP is something you developed that is entirely unrelated both to your employment and to what the company does. Conversely, even if you do not have a contractual requirement to sign over IP, if the IP you develop is developed on company time, or using company resources or know-how you obtained from your employer, then the employer may have a stake in the IP even in the absence of a contractual agreement.

So, the answer to your question is, nobody can tell without knowing a low more about the invention, your employment, and any contracts between you and your employer. Your best bet is to talk with a local attorney who can review ALL of the facts, and give you an opinion.

 

[tHEPERFESSEr]

Thank you, divgradcurl/ for your expertise. I agrre that seeing an attorney would be a good idea. Even then, as I have not used company time/ computers etc.. in any way for my endeavors; and I actually, originally, thought up this idea some time ago...(shame on me for I have not documented a thing yet), and the part owner of the company I work for is an attorney (although not a patent attorney - she does, I know, have some experience in IP). Would it be foolish for me (a.k.a shooting myself in the foot) to ask for permission, in the form of, say, a waiver, to proceed with inclementing my process? With, say, a clause of release of some kind included? I am on very good terms with the owners and management, however, I realize we are dealing with business here.

Thanks, KC

 

[divgradcurl]

Would it be foolish for me (a.k.a shooting myself in the foot) to ask for permission, in the form of, say, a waiver, to proceed with inclementing my process? With, say, a clause of release of some kind included?

That's a question only you can answer. If you have a really good relationship with the bosses, maybe it could work. The further removed your idea is from their line of business, the better.

However, you are still better off having the help of your OWN attorney, who can help you draft a waiver or release that benefits you -- unfortunately, even if the bosses are your best friends, they have a duty to look out for the company's best interests, not yours...