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Your company wants to patent something you implemented. You do not agree with the concept of patenting software. How do you proceed?

  • Would it be acceptable to file the patent, but keep your name off it?
  • Would you attempt to convince your company to NOT file the patent?

Are there any downsides to having your name on a patent?

  • Could you potentially be compelled to appear in court for a patent lawsuit?
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put on hold as off-topic by GlenH7, gnat, Kilian Foth, MichaelT, Bart van Ingen Schenau 5 hours ago

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I would go ahead and put your name on it (will help and will not hurt your career), but next time write great code off-the-clock only please. That way you can open-source it freely. Also, you might receive a one-time bonus for your efforts. –  Job Jan 28 '11 at 0:01
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Yes, there is a downside, you might have a better chance to be hired by a large software company if you have some patents in your name. Oh, wait... –  Paul Nathan Jan 28 '11 at 0:33
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+1 For giving a damn. –  Orbling Jan 28 '11 at 0:51
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You could instead search for/point out prior art. –  dietbuddha Jan 29 '11 at 6:39
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This question appears to be off-topic because it is requires specific legal knowledge that is outside of the scope of this community's expertise. –  GlenH7 yesterday

8 Answers 8

up vote 9 down vote accepted

A patent application is legally required to name the real inventor to the best of the applicant's knowledge.

At least IMO, you're always free to attempt to convince people of something legal and legitimate.

Being named as an inventor on a patent doesn't increase your chances of appearing in court to a significant degree. To put it in perspective, fewer than 2% of all US patents are ever the subject of litigation at all. Of those, I'd guess over half settle out of court without anybody testifying. Even in the cases that do go to court, nearly the only times I've seen inventors testify were when they really wanted to (typically somebody who also owned the patent).

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I have been informed by a lawyer that a patent must list not only the inventor but all the contributers, and that if this is inaccurate it may put the patent in jeopardy. –  Chase Seibert Jan 28 '11 at 14:54
    
Generally, that only puts the patent in jeopardy if there was fraudulent intent. (For example, if one of the contributors would have told the patent office that the invention wasn't original.) –  David Schwartz Sep 22 '11 at 5:47

IANAL, but my interpretation of the spirit of the patent system is that it is not optional. If you invented something, you are obliged by your hypothetical 'contract with society' to make that information public and legally binding. Failing to do so leaves a void wherein someone who did not invent it can claim that they did. Such a concept transcends either personal or business interests - it's there for the sake of the truth. "Did you or did you not produce an invention?" the Law asks, and expects an answer.

I believe that in UK law, precedent dictates that a patent holder is obliged to either defend a patent against the first and all subsequent known infringements, or for-evermore lose their exclusive right to it. That is, the first thing that anybody will ask in any subsequent case is "Why didn't you defend the last one?" where such discussion is enough to void any defence you might make.

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Someone who didn't invent something can always claim that they did. You are not obliged to file a patent, you most certainly can opt to keep the invention a trade secret if you prefer. (This is often very logical if you think you can actually keep the invention secret and are worried about use in countries where the invention would be unpatentable.) –  David Schwartz Oct 13 '11 at 13:09
    
Somebody has missed the point of my answer, even though I made it quite clear. I was voicing what I perceive to be the opinion of patent lawyers and advocates of the patent system. –  Tom W Oct 13 '11 at 14:51
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And I think your perception that people hold that view is incorrect and that anyone who held that view would likewise be incorrect. There is absolutely no moral or legal reason you couldn't opt for trade secret over patent. Patent is a trade-off, you must make your idea public but in exchange you get exclusivity. If you find that trade-off a bad deal, you shouldn't patent and you are not obligated to. –  David Schwartz Oct 13 '11 at 15:32

Would it be acceptable to file the patent, but keep your name off it?

No, that would be fraud.

Would you attempt to convince your company to NOT file the patent?

I wouldn't, but I don't object to software patents. If you do, then you should try. You should stand up for what you believe in. But unless you genuinely believe it is not entitled to be patented as a matter of US law or you don't believe the company is entitled to the patent (say because you invented it on your own time or outside your scope of employment) it would be, at least in my opinion, a gross dereliction of your duty to your employer not to sign truthful declarations and necessary forms.

Are there any downsides to having your name on a patent? Could you potentially be compelled to appear in court for a patent lawsuit?

These are really, really weak arguments. I don't think it would be rational to base a decision on them.

If you want to know what happens if you flatly refuse, the answer is that they name you as an inventor anyway and include a declaration that they have a proprietary interest, know that you are the inventor, and they file anyway. See MPEP 1.47:

Whenever all of the inventors refuse to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom an inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for all the inventors.

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Put your name on the patent. While I think its admirable of you to consider not doing so, reality is you arent affecting the system one bit by not doing so. But you are potentially hurting your professional potential (ie, in that you have patents in your portfolio). And who knows, if you get filthy rich of it at some point, you can put some of that money back into fighting frivilous software patents.

BTW, patents dont have to be enforced. A company's rationale for getting a patent may not be to get a big payday from a lawsuit, but rather to protect itself from other companies who otherwise would patent the same idea and then use it against them.

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Would you attempt to convince your company to NOT file the patent?

This is a business decision that is out of your hands. As long as patents are valuable, and as long as our world values intellectual property, patents will be worth money to companies. The management of a company has a fiduciary responsibility to the shareholders - not to you or your philosophies.

As others have mentioned, you should inspect your employment agreement, as it most likely contains a clause where you agree to assist the company in filing any patents.

Are there any downsides to having your name on a patent?

No. And when you get older, you might find that including the patent number on your resume to be something that distinguishes you from competitors.

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I'll +1 this, as it is useful and very correct. But a lot of that first paragraph is an unfortunate indictment on the modern corporate world. –  Orbling Jan 28 '11 at 0:50
    
+1 totally agree with business aspects of patents. In an ideal world, patent would not be necessary at all. However, in the cut throat world of tech business, every weapon in the company's arsenal comes into play. Just look at Google recent acquisition of Motorola Mobility. –  tehnyit Sep 22 '11 at 7:22

Some of the legalities of this are going to be specific to where you live; however, generally unless you have a very unusual work agreement with your employer (i.e. you own all of the code an it is licensed to them for use) anything you invent while on the job legally belongs to the company as a work for hire. As such, there really isn't much you can do to keep them from filing the patent and in fact it may hurt your career to try and fight it. Additionally, depending upon your jurisdiction, there might be laws in place that require them to name you as the inventor on the patent even if you don't cooperate with the process.

That said, if you are reasonably certain that the patent is for an obvious process you might want to do a patent search to see if someone else holds the patent or that there is prior are. If this is the case then you could frame your findings in a manner that shows you are saving the company money on legal fees since they can avoid the patent process. This can also hurt the company though as it might open them on to have to license the technology.

So in summary, your options are kind of limited as you might not have legal grounds to not appear on the patent and if you try and fight the process it could hurt your career with your current employer. In terms of the long term though, when you go for your next job it is up to you if you want to list it on your CV and since most people aren't going to do a patent search as part of the interview process, they might not find it. Alternately, some companies might find the fact that you have written a patent a plus and it might offer you some more job opportunities. Likewise, it could also help during some interviews as you have legal documentation of a product that you developed and can show during and interview as opposed to the interviewer having trust everything you say is accurate.

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At my company, employees must sign a patent agreement (the actual document has a much longer name) that includes the phrase "employee agrees to perform ... all acts deemed necessary or desirable by the company to permit and assist the company ... in obtaining and enforcing patents..." If you've signed something like that, your choices may be more limited. You should probably check before proceeding.

Also I'm not an attorney, but I think the patent requires the inventors name, so there's no opportunity to not have your name on it. They can't file it without your name.

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If you created the software as an employee, it belongs to them as "work for hire," not to you, so there's probably not much you can legally do to prevent them from filing the patent. What I'd do is attempt to persuade them not to file a patent and go on the record as objecting to having code you wrote abused in this way.

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I would recommend not doing this - it might hurt one's career. –  Job Jan 28 '11 at 0:01
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I concur with Job. The patent will go through either way, and the objection will only harm the qa's career. It's difficult to find a situation in which one can both write great code which can be available freely, and get paid for said work. –  blueberryfields Jan 28 '11 at 0:10
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I'd upvote this if it wasn't for the second sentence. As an employee you effectively have no right over the code you create for your employer. –  ChrisF Jan 28 '11 at 0:11
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Sometimes standing up for what you believe is more important than money. And this isn't likely to hurt someone's career. Hurt their prospects of remaining employed with that particular company, perhaps, but it won't magically make them unemployable at other companies. –  Mason Wheeler Jan 28 '11 at 0:31
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@Mason Wheeler: Well said, standing up for what you believe in is always more important than money, or in my book, life. Without principle you have nothing. –  Orbling Jan 28 '11 at 0:44

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