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Two questions: 1. If a developer co-own a patent with his former employer (IBM), does this developer have the right to use his patent technology later at Googl

• _delirium 13y ago
  On #1, the answer would be yes if they really did co-own it and had no other contract regulating terms of their co-ownership (unlikely). Under U.S. law (not true everywhere!), co-owners of a patent each have an independent right to exploit and/or non-exclusively license the patent, without consultation with the other co-owners, unless they've entered an agreement providing for other terms of co-ownership. This is also true for copyrights on jointly authored work, incidentally. However, companies usually just get the patent assigned to them by the employee, in return for some token compensation (varies, sometimes it's really token, like $1, other companies will pay employees $100-$1000 per patent). One place where it can sometimes come up is that a co-inventor who was omitted from the patent application can later try to get him/herself retroactively added. Trying to dig up such people, get them added, and then buy a license from that person is one strategy for defending a patent lawsuit. E.g. if IBM bought a patent from a university spinoff, you could try to dig up a grad student who can document he/she co-invented the relevant technology but wasn't listed on the patent, get them added, then license it from them. Since they now co-own the patent with IBM, you only need to license it from either them or IBM, so IBM's suit fails. I think doing this successfully is pretty rare, but there's a fairly famous case: http://scholar.google.com/scholar_case?case=8929550350181055569 http://scholar.google.com/scholar_case?case=8929550350181055...
• diegomcfly 13y ago
  1. No. Assumption being that any thing "invented" while working for IBM, belongs to IBM. The developer does not "own" it. He/she is only listed as basically the "(co)-inventer". He cannot go to Google and "use" it with out licensing / agreement from IBM. Now .. it is plausible that an employee invented something totally on their own time while an employee of IBM. That said, if this had any value (now or in the future), it is entirely likely and plausible that IBM could make a case legally for having rights to said invention. This is especially true if your "invention" is in the same domain you work in for IBM (e.g. if you are a middleware developer for IBM Software Group and you make a new type of messaging technology .. on "your own time" in the evening/weekends). 2. This is a grey area that will ALWAYS be open to legal interpretation (enter the lawyers). There are different things involved in your question: Are there non-competes in your employment contracts?, are they actually enforceable legally?, will they be enforced legally?, what specifically is the "technology"? So .. this is not possible to answer beyond just saying: It depends. It is case-by-case and is balance between an business' intellectual property, any contractual agreements (non-compete) you may have signed, and your right to work / find gainful employment.
  • bluedevil2k 13y ago
    1. Correction on #1 - technically you "invent" whatever the patent is, and then assign its rights over to IBM, whereby the compensate you. That's why the inventors' names are on the patent.
    • _delirium 13y ago
      The reason for that is that under the prevailing caselaw, companies can't be "inventors" of things, and therefore they don't fit under the clause of the U.S. Constitution that authorizes patents, which specifically mentions securing exclusive rights to an invention to its "inventor". Hence the legal dance where the inventors (specific humans who invented something) are named in the patent, but then they assign their exclusive right to the invention to another legal entity (their employer). I think that might be a bit of a historical anomaly, though, related to when different doctrines were developed. Nowadays legal personhood is personhood-enough for most areas of law. One could imagine a court in 2014, looking at this issue for the first time, deciding that when a company puts a bunch of R&D money into something, and an invention results, through the actions of perhaps dozens of people working within the company's structures and facilities, it is in effect the company as an aggregate entity that has invented the invention. That might even fit a bit better (though still imperfectly) with modern scientific/historical understanding of invention, which generally views single-person "eureka!" moments as the exception, and collaborative efforts where some R&D "system" can be reasonably credited with the invention as the norm. But this particular body of law was settled back in the days when the prevailing legal fiction around corporations was a bit different, so only humans can legally invent things. Due to the common dance around assignment, it doesn't make much practical difference anyway.