Should I be compensated or at least have a defensive strategy?

Discussion in 'Off-Topic' started by strantor, Feb 22, 2012.

  1. strantor

    Thread Starter AAC Fanatic!

    Oct 3, 2010
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    Guys, I break my vow of internet celibacy today to ask you a very important question.

    Some of you may remember, a year or so ago I designed a cable conductor monitoring device here at the Wire & cable making plant where I work. The device monitors the conductors for continuity & leakage/shorts to machine chasis. I installed it in an existing cable armoring machine we have, and it shuts down the machine in the event of damage to the conductors. It has been very successful. I never thought to inquire about a patent or anything because I figured it was and always would be a one-off, in house job that nobody would be interested in copying or buying or patenting.

    Today a man came to me and asked how it works and I explained it to him in general terms, nothing specific; he asked me to email him the schematic for it, with parts list and a detailed explanation of how it works. The man used to work here as a regular employee for 30+ years and then he retired. He now serves the company as a "Cable Design Consultant". He "works" here; he has an office here and a company email address & telephone number, but I believe he is a one man operation. He facilitates deals between my company and other companies.

    My company is ordering several new cable armoring machines, and they want devices like mine integrated into them. They want the devices to come pre-installed in the machine from the manufacturer, and not an afterthough add-on like mine. That is why the consultant is asking for my design. He wants to send it to the manufacturer of the armoring machines so that they have some place to start; some idea how the device should operate. They may or may not exactly copy my design - I do not know. I also do not know if this armoring machine company may or may not use my design on machines that they build for other clients in the wire & cable business.

    I, like just about anybody, signed a paper when I started here saying that anything I invent while working here, and for some period after I leave, is intellectual property of the company. So I understand that legally my design already belongs to them, but I also know that the engineers that work here get their names on the patents for things that they invent. I believe they may also get bonuses for their inventions. So, What I want to know, is if I should just hand over the design no questions asked, or if I have a right to make some kind of request for compensation and/or a patent contingent on my release of the design.

    Thanks
     
  2. praondevou

    AAC Fanatic!

    Jul 9, 2011
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    I don't have an answer to this question.

    Nice to see you back here. :cool:

    If the "consultant" is not an employee of the company where you work I don't think you HAVE to hand him over the schematics.

    The decision is probably not up to you if the schematics can be given. If I were you I would ask my boss the same question you asked here and also ask him if there is any reward you could get for this.

    However I don't think so. I also signed that paper... :) It's an interesting question though, I guess I'll ask our engineers tomorrow.

    Cheers
     
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  3. MrChips

    Moderator

    Oct 2, 2009
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    You do not have to hand over anything. You have signed an agreement which is standard practice with every company. The invention already belongs to the company. But the intellectual property remains with you in your head. Whatever drawings and documents you have produced in the course of your employment belongs to the company.

    Now it would be up to your boss and your company to decide if you have performed your job in the proper manner. If they want you to provide more documents you may be in a position to negotiate for compensation or risk losing your job, depending on the relationship you have with the company.

    I would talk to your boss about this, not the consultant.
     
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  4. maxpower097

    Well-Known Member

    Feb 20, 2009
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    Ok did company A you work for pay you to design this? If not it yours to do with what you please. If Company A paid you to design it, and this guy still works for company A then I would imagine he has rights to see it. If he works for a new Company B then no he has no rights to it at all. Offer to sell it to him. Or lease him rights to use it. Unless Company A owns the rights by paying you to make it.
     
  5. maxpower097

    Well-Known Member

    Feb 20, 2009
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    Another way to look at is it safe then sorry. According to lawyers if it somehow belongs to Company A weather you think so or not, and you give it to him. You could loose you job for giving out inside info or god forbid industrial espianage. Sounds cool but Fed prison sux no matter how nice they make it look on TV.
     
  6. 1chance

    Member

    Nov 26, 2011
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    Many of beenthere's designs were patented by the university when he worked there. He didn't receive squat for them. Not even a pat on the back. He felt extremely exploited.
     
  7. K7GUH

    Member

    Jan 28, 2011
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    Perhaps you can find someone who knows all about the company policy and the applicable laws. It would (maybe) be in your best interest to apply for a patent in your name while assigning some or all of the patent rights to your employer.
     
  8. loosewire

    AAC Fanatic!

    Apr 25, 2008
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    Keep your head down and do work.Don't draw
    attention.Wait for a letter.
     
  9. DerStrom8

    Well-Known Member

    Feb 20, 2011
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    I most definitely wouldn't give him the designs. If I were you, I'd talk to the person as high up in the company as you can go and see what your options are. Perhaps even mention the situation (in simple terms--nothing specific) and ask what you're entitled to. I would also look into getting it officially patented, if you haven't already, though that's something you'll have to talk about with the company owner. These kinds of things are snares that big companies often drag you into in order to exploit their employees, and I am dead-set against it. It definitely isn't right, and just an employee getting your designs is even more wrong. The best thing I can say is to think of a way to bring it up with your boss in a way that is not suspicious (you never know how honest these big-shots are) and set up a sort of hypothetical situation. One thing is for sure, though, and that is that the employee has absolutely no right to force you to give him your designs. That's just asking for trouble. You should also get something in writing proving that you invented this, and that your name MUST be on the patent.

    It's good seeing you strantor, and I hope things work out for you.
    Kind regards
     
  10. Brownout

    Well-Known Member

    Jan 10, 2012
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    Yes, definitely ask for recognition and/or compensation if this is patented. You sure as heck won't get it if you don't ask. If you don't get anyting, well then it's nothing ventured, nothing gained.
     
  11. steveb

    Senior Member

    Jul 3, 2008
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    I don't think you have a right to hold back the design from your company, but be careful who you actually release the information to within your company. Your company owns the designs (by your own admission) and has the rights to any patents and use. I think if you tried to hold the design back, that would be grounds for dismissal. It is a form of insubordination and can create bad blood with your managers and the company owners.

    However, I recommend that you have approval from the appropriate people in your company before you release the design to someone who is also an outside consultant, as you seem to be describing. You must release your design to your company, but you must not release your design to anyone that is not authorized within your company (or to anyone who does not work for your company). In other words you are answerable to your supervisor and his supervisors, but not any other person who requests information from you. You may even be liable for damages if you release the design to the wrong party.

    Additionally, it sounds like you are the inventor, or at least a co-inventor. Any patents will have to have your name on it to be a valid patent. Failure to include all inventors on a patent puts the patent at risk for invalidation. So, I think that if a patent is planned you should make sure that your managers understand that you are an inventor. I also think you are within your rights to request (not demand) that you receive any typical compensation that other workers at your company receive for being inventors on a patent. However, if you find that you are not being treated fairly in comparison to others, you could consult a lawyer about that, or you may decide to take your talents to another company that appreciates your capabilities.

    EDIT: By the way, I'm not an attorney so take this with a grain of salt. However, these are things I've encountered in my past work.
     
  12. DerStrom8

    Well-Known Member

    Feb 20, 2011
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    Exactly. You can't hold it back from your company, but I wouldn't recommend giving it to some other employee. Never know how trustworthy they are :eek:
     
  13. strantor

    Thread Starter AAC Fanatic!

    Oct 3, 2010
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    Ok, I just got an email from my boss (he replied from home, which is a first) saying not to give the consultant the plans, but to get started making new devices for the new machines that will be coming in. I feel relieved that I'm out of the woods with the whole precarious IP situation, but I still wonder if maybe I should be trying to get a patent on this thing. I think that, for the same reason I didn't bother to persue a patent in the first place - It's a one-off device that won't ever be used outside this plant - that my company wouldn't want to go through all the red tape to get a patent on it (we have our own patent lawyer on the premesis). But this whole thing makes me wonder if that's true or not. I'm feeling mildly exploited right now, like I may have stumbled onto something good, but the powers that be want to keep it under wraps, so I'll never know for sure.
     
  14. DerStrom8

    Well-Known Member

    Feb 20, 2011
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    If the company you work for finds a use for it, I'm sure other companies could too. I would probably ask about the patent anyway, just to be on the safe side. You never know what the future may hold.
     
    Last edited: Feb 22, 2012
  15. strantor

    Thread Starter AAC Fanatic!

    Oct 3, 2010
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    Yeah, that's what I was thinking. The fact that the company who makes the machines doesn't offer a device like it already, and we have to make our own says a lot. If we need it, other people probably need it too. I'm going to ask around and see what my options are. May need to go a step or two above (or laterally) of my supervisor to get the real scoop.
     
  16. strantor

    Thread Starter AAC Fanatic!

    Oct 3, 2010
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    I wonder how much of a brownie point a patent is on your resume - I'm sure someone here knows first hand. What's up?
     
  17. steveb

    Senior Member

    Jul 3, 2008
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    It definitely looks good. It's hard to quantify, but more often than not, that is the greatest value a patent has. Very very few patents ever earn more than they cost (>$10,000), and the ones that are money earners sometimes require a lot of money to defend. It is often difficult for an individual to deal with these expenses.

    I would think very carefully before you take on patenting this. First, you have to get your company to relinquish the rights to you. They will probably want to have a royalty free license written in to the agreement. It's not clear why they would relinquish the rights on something they are using, only to see it used by their competitors.

    Even if you somehow negotiate that difficult deal, you have to take on the patent fees and costs. Then you have to defend the patent. When you patent, you release the information to the public domain. Then if a company uses it internally, you have no way to prove that your patent has been infringed. Ideas like this are usually better left as trade secrets, and your company would be wise to keep it that way. They would also be wise to keep you as a well compensated employee. Otherwise, you might work for a competitor.
     
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  18. strantor

    Thread Starter AAC Fanatic!

    Oct 3, 2010
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    I was under the impression that the way it would work, is that my company would get the rights to the patent. I would recieve very little, if anything, except for my name being on the patent (bragging rights). It would be theirs (my company) to defend, and theirs to capitalize on.

    Is what I'm describing in any way based on truth? Is there more than one way this could go down (me being patent owner vs. my company being patent owner)?
     
  19. Kermit2

    AAC Fanatic!

    Feb 5, 2010
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    If the company has a properly designed legal document covering them in concerns of patents and ownership rights of employees(and they probably do), and you signed it, then they hold the cards in regards to ownership. As stated earlier; you retain the intellectual rights, but nothing else. Courts might change terms, but that is a risky gamble.

    All things can change with agreement between the parties.

    Ask for the bragging rights(but leave out the part about a resume, or career change) ;) You know better than we how to approach your bosses concerning this.
     
  20. loosewire

    AAC Fanatic!

    Apr 25, 2008
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    The short blupt that i posted was based on real piece of advice.

    I was asked,should I return this attorneys phone calls,I said no,If

    he wants you bad enough ,he will write you a letter.Do like

    Westinghouse and others did when you leave change it enough

    to make it look different from a legal stand point.You sound like

    that you are able to handle your affair, very well. Study early

    history on patients,you may learn alot from the old pro's.
     
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