
Ask HN: Can my company sue me, if I use a patent I signed to them? - MediumD
While working at a company, they patented one of my HackWeek projects. Now if I want to start a company that uses some of the elements of the project that was patented, can&#x2F;will I be in trouble?
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dboreham
What exactly do you mean by "they patented one of my..." ?

Patents have named inventors, which can not be companies: they have to be
people.

When someone works for a company (actually because of this rule that patents
are assigned to individual inventors) they agree as a condition of employment
to "assign" the rights to any patents awarded to them in conjunction with
performing work for the company (and sometimes not when doing so also) to said
company.

So, did they company pay for filing of a patent with you as a named inventor?
If so then you signed away the rights to this patent (or you did if they have
their legal paperwork straight). You own it as much as I do. You might try
asking them nicely for a license to use it -- they might be inclined to help
you since to some extent they also need your good will for any future
litigation over said patent.

Or, did someone else at the company file a patent covering something that you
believe you (not them) invented? If so then prepare to open a legal can of
worms.

I guess you might also be saying that the company filed a patent with or
without you as a named inventor that you believe is weak (not really a
patentable invention) and you're wondering if this is any different than the
likely 1000 other weak patents out there covering the same "invention"?

Perhaps if you post more details on the specifics of the situation folks here
can help with more accurate advice.

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MediumD
To add more information, I built something for a HackWeek at the company, that
they now want to patent (with me as the named inventor). However, I have been
considering quitting and doing a startup which would involve the thing they
are trying to patent, in a small way. If I sign the papers, does this prevent
me from using similar software techniques at my future startup?

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mchannon
Typically the inventor has to prepare the patent, and it is first to file now.
It is then up to the person doing the filing to assign the patent to a company
of their choice.

I'd consider filing your own provisional patent ($70), which will never see
the light of day unless you continue the application in a year, but will give
you the priority date.

Filing, even for a provisional, isn't trivial. To survive the decades-long
process, you'll need claims and drawings from the get-go. You'll also need to
scour google.com/patents to make sure it hasn't already been invented.

It won't become known for a year-plus after filing that you have this patent
application, and by then hopefully the old company will have forgotten about
your little technology.

But rather than being sneaky, instead of signing, consider proposing a
separation agreement that basically says you're done, everybody's square and
nobody's suing anybody for any reason. If they say whoa there, just say you'd
prefer not to patent anything because you value your privacy. You're probably
hard to replace and I'd never trade a good employee for a patent.

This gives them the choice of firing you (meaning you can file yourself with
no contract ramifications) or giving you a free pass on your patent idea.

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useranme
"To survive the decades-long process"

It's not a decades-long process. I've seen it be closer to 2 years.

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mchannon
I was referring to "patent process", not "filing process".

Filing application until issue of patent is only the very beginning. You have
renewal payments at 3.5, 7.5, and 11.5 years after issue. If you get a
restriction requirement, you get to start the clock over each time as your
single patent application blossoms into multiple, or dozens, or hundreds, if
it's deemed worth the expense. Continuations-in-part and reissues can take it
even further.

And that doesn't even bring litigation into the picture. Your patent can be
long expired before you file an infringement lawsuit (because you can
demonstrate they infringed when it _was_ valid), and that by itself can add
10+ years, as we're seeing in many cases out of the courts.

For what it's worth, I'm on year 9 of the filing-to-issue process for my first
patent.

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kleer001
Pay for a patent lawyer's time, $500-$1000 (or less if you're lucky). Or some
clever combination of retainer or something.

It'll save you 10-100x that much in pain and suffering. And it always pays
dividends to talk to a professional.

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trcollinson
I am not a lawyer however I went to law school and know a bit. First, get a
lawyer. Second, be prepared to hear that you do not own the project any more
so yes you can get sued and you will lose and you will owe a lot of money.

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useranme
It's not worth it. You'll have other, more valuable ideas. Let it go.

Odds are the company won't understand this, or that only you could make this
idea work (in a sense ideas choose people, not the other way around), and the
patent may end up being useless to them. It's ok. Let it go.

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itronitron
Look for prior art as that is likely your only way to use similar software
techniques outside the company. But if you are still working at the company
then you should push as hard as you can internally to get them to support the
work that interests you, eventually they will get sick of hearing about it and
let you do what you want.

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ecesena
You should consult a lawyer, but typically a patent can be enforced if all the
claims are met.

If your new startup does something similar, but with enough variations that
you can prove doesn't meet all the claims (here is where you need the lawyer),
then you're good.

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relaunched
IANAL (not a lawyer).

Be very careful with advice like this.

Patents of different classes of claims, dependent and independent, for
example. Some stand on their own, some don't. Patents encapsulate lots of
claims, and violating any one of them can represent a significant IP
infringement and could lead to damages.

Your advice about 'enough variations that you can prove doesn't meet...' is
dangerous. What you mean to say is that, "if you are willing to spend up to
and potentially beyond $100,000, a jury might make the determination that you
did not infringe." Lawyers don't determine whether or not you infringe, juries
do. And, the most common resolution in IP is ceasing activities or licensing,
which are usually settled out of court.

~~~
ecesena
It was not an advice, it was a comment on HN (I'm not a lawyer either, so I
can't provide advices.)

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XDASyndicate
If it is their intellectual property now, then yes. Even if they aren't
actually mad at you for using it, protecting assets is a part of business.
Valve did this quite a few times.

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gesman
Yes (== trouble), unless you have specific written agreement allowing you to
use patent as well or use that specific technology.

I guess you don't have (such agreement).

