Intellectual Property Act

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shankar123

Registered Users (C)
I have question from my spouse:
==========================
Hi,
I am working for a software company but at the side I did some of my own study totally unrelated to my works in Mathematics and might be in a position to apply for a patent.
I had signed the standard Intellectual Property Act for my employer but my question is my patent has no business usage in their line and I never used any company resource for this.
Do I need to transfer the patent to them?
Thanks
shankar's spouse
=============================
 
If you worked on the idea entirely on your own time (not during normal hours of employment) and did not use ANY resources at work (computer, internet access, ideas obtained from work, etc.) then the patent is entirely yours. What you do outside in your spare time is entirely yours and the employer cannot claim anything.

Make sure you keep records of the work done (date, time, resources used, etc.) in case the employer comes after you.
 
nkm-oct23 said:
If you worked on the idea entirely on your own time (not during normal hours of employment) and did not use ANY resources at work (computer, internet access, ideas obtained from work, etc.) then the patent is entirely yours. What you do outside in your spare time is entirely yours and the employer cannot claim anything.

Make sure you keep records of the work done (date, time, resources used, etc.) in case the employer comes after you.
Click to expand...
Though this type of arguments (really true in many cases)by inventor,it is
not easy to prove and ends up in an unresolved tussle,especially when the patent being applied with in a 'parallel' time of 'employment' and that too when the inventor can not prove atleast that the 'physical area of work for the invention'is different .This 'area of work' in this case is intellectual so
the tussle.
If possible always the invetions(and patent application) that spanned 'ouside the periods of employment' with this employer will be the safe bet but may not be practicable.Any way, to avoid hassles before hand, it is better to
take atleast an cursory advise from a patent attorney which will be helpful.
(some cos. has the habbit of first claiming part rights in any invention
until proved otherwise.Again this spending to attoreny depends on how much commercial worth this invention got).
Good luck to the inventor.
 
shankar123 said:
I have question from my spouse:
==========================
Hi,
I am working for a software company but at the side I did some of my own study totally unrelated to my works in Mathematics and might be in a position to apply for a patent.
I had signed the standard Intellectual Property Act for my employer but my question is my patent has no business usage in their line and I never used any company resource for this.
Do I need to transfer the patent to them?
Thanks
shankar's spouse
=============================
Click to expand...
However,as every case is different in the 'circumustance' of invention,
you may check your base, prima-facie with reference to your employment contract.As the invention will be normally be hard work of original individual,
you may explore various bases to counter future problems with employer,if any.
Review the following info' as some things may be helpful,incase .
From:http://www.yale.edu/ocr/invent_guidelines/inventor_owner.html
"An obligation to assign a patent usually arises when there is a contract between the inventor and the assignee requiring an assignment, such as when a contractor is hired to solve a particular problem, or when certain employer/employee relationships exist. Generally, an employee must assign an invention to an employer if the employee has a specific contractual obligation to assign or if the employee was hired to invent or is directed by the employer to solve a particular problem. Although courts have divided on this issue, employees who have been hired to do research in general usually do not have to assign their inventions to their employers. Also, employees who have been hired for purposes other than to do research have no duty to assign their inventions to the employers.

Of course, parties may define their rights by contract. It is a good idea for companies and universities to have contracts in place with their researchers that require assignment of any invention discovered in the course of their employment.

Another issue that frequently comes up is who owns an invention that is invented by someone who would ordinarily not have a duty to assign to the employer, but where the invention was made using employer resources or on company time. In these cases, In such cases, employers are entitled to a "shop right," by which the employer receives a royalty-free nonexclusive license to use the invention during the term of any patent that the employee might get for the invention.1 Of course, as with any other rights between parties, the employer and the employee may contract with each other to enlarge or to reduce these shop rights."
Also you may see the links:
http://www.bowie-jensen.com/?file=patentlaw.inc
http://www.dww.com/articles/inventorship.htm
http://www.yale.edu/ocr/invent_guidelines/docs/inventor_owner.pdf
http://www.tms.org/pubs/journals/JOM/matters/matters-9004.html
http://www.wipo.int/sme/en/faq/pat_faqs_q6.html
http://www.law.duke.edu/journals/dltr/articles/2001dltr0035.html
Good Luck.
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Just an lay man's opinion.not a legal advise
 
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