IP Rights after Retirement

[Martin Harran]

I recently retired from lecturing in a third level institution. My
student material - developed by me from scratch - was stored on and
delivered via the institution's facility on Blackboard, the online
framework for educational establishments. I have been asked to give
access to the relevant materials to a new lecturer who is taking over
one of the modules. I have no issue with doing that - on the contrary,
I thoroughly enjoyed my time with the institution and said at my
retirement that I was happy to give any lecturer access to any of my
materials.

In the proverbial "interests of curiosity", however, I am wondering
what the legal position is; would IP rights as my employer allow the
institution to give access to another lecturer without my permission?

Also, what rights do I now have to the material? I have my own
original copies, is there anything to prevent me including them, for
example, in a book or maybe some educational videos?

[Andy Burns]

Martin Harran wrote:

> In the proverbial "interests of curiosity", however, I am wondering
> what the legal position is; would IP rights as my employer allow the
> institution to give access to another lecturer without my permission?
>
> Also, what rights do I now have to the material?

I would assume (!) that it's a similar situation to a software developer
employed by a company, all the rights of coursework you develop are theirs, none
are yours, unless you have something different in writing?

[Martin Brown]

On 23/09/2021 08:25, Martin Harran wrote:
> I recently retired from lecturing in a third level institution. My
> student material - developed by me from scratch - was stored on and
> delivered via the institution's facility on Blackboard, the online
> framework for educational establishments. I have been asked to give
> access to the relevant materials to a new lecturer who is taking over
> one of the modules. I have no issue with doing that - on the contrary,
> I thoroughly enjoyed my time with the institution and said at my
> retirement that I was happy to give any lecturer access to any of my
> materials.
>
> In the proverbial "interests of curiosity", however, I am wondering
> what the legal position is; would IP rights as my employer allow the
> institution to give access to another lecturer without my permission?

You would have to look carefully at your original contract of employment
but I would be surprised if they didn't lay claim to anything and
everything you invent, create or develop in your waking hours by default
(including things entirely unrelated to your own research).

Whether or not such a clause is legally emforceable these days is open
to question. Likewise the must not go to work for a competitor within N
years one (in a field where there are only a handful of major players).

I have had to negotiate my own contract of employment to exclude certain
other unrelated IP I possessed (and my commitments to maintaining it)
from the scope of future employment with larger companies. It was never
actually a problem but you do have to look after your IP to keep it.

Their default position is that they own everything and anything you do,
invent or create whilst employed by them. It has led to one or two
really interesting bun fights when an inventor has not felt adequately
rewarded for his major contributions to company profits. eg

https://www.science.org/doi/10.1126/science.293.5535.1575a

(not the one I intended to pick but a fair example of the type)

> Also, what rights do I now have to the material? I have my own
> original copies, is there anything to prevent me including them, for
> example, in a book or maybe some educational videos?

Again you would have to check your contract of employment. I don't think
any university ever prohibited lecturers publishing textbooks (IME they
positively encouraged it - mine had its own branded publishing house).

--
Regards,
Martin Brown

[Norman Wells]

On 23/09/2021 08:25, Martin Harran wrote:

You're talking about copyright, and that is governed by the Copyright,
Designs and Patents Act 1988..

The author of a work such as you describe is the copyright owner, and it
remains his unless he assigns it in writing to someone else.

It's a matter of contract whether you are obliged to assign anything you
created in connection with your work and employment to your employer.
So, you need to go back and look at your contract of employment to see
if that's the case.

If you (have to) assign any of it, it is no longer yours to exploit
without the assignee's permission.

[soup]

On 23/09/2021 08:25, Martin Harran wrote:

It all depends on your particular contract.
I believe the 'normal' contract signs over everything you
invent/use/developed during work to your employers .
I worked at British gas' "Engineering Research Station" the contract
there was of this type.
I have heard of other contracts were anything used/invented/developed
in or out of work belongs to the employer.
Either give the contract a 'look see' or contact your ex-employer's HR
department. I assume they would know off-hand as it strikes me as a
fairly common question.

Even if the IP now belongs to your ex employer quite often (if you ask
nicely) they may allow you to use stuff in books or whatever. May
require attribution to them.

[notya...@gmail.com]

It is usually stronger than that, with clauses stating that all IP vests in the organisation paying you from the moment of creation.

I had one a bit lie this, having developed a solution to a problem in scan conversion for a UK company. After a visit to a university the company annoying decided not to patent or copyright the work assuming other would not catch up.

A few years later I was working elsewhere when the original company went into administration, but alas not liquidation, otherwise I would have been released from the contract and could have exploits my "invention".

A close friend of mine developed a series of books in conjunction with a university where he lectured, they published with his copyright, however the deal was that he got a slice of the royalties and also produced updated editions.

[Philip Hole]

The main problem arises with patent IP where the employer does not claim
ownership of patents which were invented outside of the working
environment and have no connection with the employer's business.

In my bath, I discover a method of making a perpetual motion machine.

If my employers claim ownership of the patent to be, there is no point
in applying (and paying) for a patent for which I will receive no benefit.

But, if they disclaim all rights, then I cannot succeed with a patent
application because the patent claims have been revealed to a third party.

Presumably I must ask my employer so sign a non-disclosure agreement
without knowing what they were signing for.

All very messy.

--
Flop

[Norman Wells]

On 23/09/2021 15:15, notya...@gmail.com wrote:
> On Thursday, 23 September 2021 at 08:43:40 UTC+1, Andy Burns wrote:
>> Martin Harran wrote:
>>
>>> In the proverbial "interests of curiosity", however, I am wondering
>>> what the legal position is; would IP rights as my employer allow the
>>> institution to give access to another lecturer without my permission?
>>>
>>> Also, what rights do I now have to the material?
>> I would assume (!) that it's a similar situation to a software developer
>> employed by a company, all the rights of coursework you develop are theirs, none
>> are yours, unless you have something different in writing?
>
> It is usually stronger than that, with clauses stating that all IP vests in the organisation paying you from the moment of creation.

Such clauses are invalid if they purport to cover everything you create
during your period of employment but not as a result of your employment.

For example, Section 39 of the Patents Act 1977 says:

(1) Notwithstanding anything in any rule of law, an invention made by
an employee shall, as between him and his employer, be taken to belong
to his employer for the purposes of this Act and all other purposes if—

(a) it was made in the course of the normal duties of the employee or
in the course of duties falling outside his normal duties, but
specifically assigned to him, and the circumstances in either case were
such that an invention might reasonably be expected to result from the
carrying out of his duties ; or

(b) the invention was made in the course of the duties of the employee
and, at the time of making the invention, because of the nature of his
duties and the particular responsibilities arising from the nature of
his duties he had a special obligation to further the interests of the
employer's undertaking.

(2) Any other invention made by an employee shall, as between him and
his employer, be taken for those purposes to belong to the employee.

> I had one a bit lie this, having developed a solution to a problem in scan conversion for a UK company. After a visit to a university the company annoying decided not to patent or copyright the work assuming other would not catch up.

Copyright subsits automatically on creation of the work and belongs to
the author until he assigns it in writing to someone else, whether under
a contractual obligation or not. There is no process to register or
record it.

As regards patenting it, if the invention belonged to the company, it's
the company's decision, not yours, what to do with it.

> A few years later I was working elsewhere when the original company went into administration, but alas not liquidation, otherwise I would have been released from the contract and could have exploits my "invention".

As a matter of law, no you wouldn't unless the liquidators released you
from that obligation..

[Norman Wells]

It's only a question of to whom the invention belongs, as I've just
explained elsewhere in this thread. If your invention has nothing to do
with the company's business and is not created as part of your
employment, you own it and have to protect it yourself. Your employer
can neither claim ownership of it nor disclaim any rights that they
never had.

Section 39 of the Patents Act really isn't messy at all, and the
situation is actually very clear.

[Martin Brown]

On 23/09/2021 21:17, Philip Hole wrote:

If that is their stated position then provided that the invention is not
related to your work for them you are free to patent it. Very
occasionally you see people who leave a major company to set up a rival
start up and miraculously invents something after a suspiciously short
period of time. The spawning of Zilog from Intel was a historic example.

If the company thinks your patent relates to your work for them then
they will challenge the application when it is published.

>
> In my bath, I discover a method of making a perpetual motion machine.
>
> If my employers claim ownership of the patent to be, there is no point
> in applying (and paying) for a patent for which I will receive no benefit.
>
> But, if they disclaim all rights, then I cannot succeed with a patent
> application because the patent claims have been revealed to a third party.

Although that can be solved with a suitable non-disclosure agreement -
you have to disclose your invention to a patent lawyer at some point if
a valid patent is to be drafted. He is also a third party (although my
company had an in house specialist). It was always interesting to see
how he would rework engineers descriptions to encompass a wider remit.

Independent patent lawyers come in two flavours. The ones who give you
good advice about whether an invention is patentable and worth patenting
or better held as a trade secret. And the ones that will take your money
and draft a patent irrespective of the merits of the claim(s). A patent
is really only of use if you have deep enough pockets to take action.

CAVEAT EMPTOR - always ask around for personal recommendations.

> Presumably I must ask my employer so sign a non-disclosure agreement
> without knowing what they were signing for.
>
> All very messy.

Or you could negotiate to retain your IP that is outside the remit of
their business and done in your own spare time. I have done that myself.

You have missed another very important failure case in the large company
scenario too. Inventor designs something to solve a particular important
problem at work in works time and gets a company patent. Bean counters
decide that making a widget isn't their core business and so the patent
sits on the shelf and the invention remains unexploitable by anyone.

The example I have in mind was a safety jig for rescuing an unconscious
man from inside an industrial chemical reaction vessel. Chemical company
patented it but CBA to license it to a willing local manufacturer (other
than for making a handful of them for their own needs). There were loads
of others on a much smaller scale but this one had real impact.

The existence of that patent prevented much wider exploitation of device
that almost certainly would have saved lives in many other companies.
Once the patent had expired the device did eventually reach the market.

The flip side of this is also an interesting one too. Monoclonal
antibodies were not patented because the government agency tasked with
patenting IP originating from universities was too focussed on widgets.
The inventor didn't think they should be and so didn't push his case.
(had they been we would have no shortage of science funding in the UK)

--
Regards,
Martin Brown

[Martin Brown]

When did it change? My first corporate employer laid claim to every
waking hour of their employees and *anything* that they invented related
or unrelated to their work. Whether or not it was enforceable I do not
know - to the best of my knowledge it was never tested in court.

People did sometimes quit and then pop up soon after with some new
invention though in spin off companies nearby (there was quite a cluster
of them). It was a fairly heavily R&D establishment that owned a fair
number of patents and one or two of them were extremely valuable.

--
Regards,
Martin Brown

[Martin Harran]

The institution's Contract of Employment refers to its Intellectual
Property Policy & Procedure. I've checked that and there are a couple
of relevant points:

It states

"As a general rule (further details of which are set out in paragraph
6.3, and subject to
the exceptions set out in this IP Policy), any IP rights in or to any
material/works created
by Personnel in the course of their employment or education by [the
Institute] or in relation to
work carried out for [the Institute] is the property of and vests
solely and absolutely in [the Institute] or such companies or
organisations as [the Institute] may nominate for such purposes. Such
material/works include, but are not limited to any:" (standard list
given)

That's fairly boilerplate, typical of most Employment Contracts as
referred to by various posters.

In AIMS OF THE POLICY it states:

"To motivate the development and exploitation of IP by providing
appropriate rewards to both originators and [the Institute], and to
provide administrative assistance to originators. "

I would not expect to see that in an Employment Contract with a
commercial organisation!

[Norman Wells]

And it's perfectly reasonable too. It also accords with Section 39 of
the Patents Act.

[Roland Perry]

In message <sikee4$1c07$1...@gioia.aioe.org>, at 12:56:51 on Fri, 24 Sep
2021, Martin Brown <'''newspam'''@nonad.co.uk> remarked:

>On 24/09/2021 08:53, Norman Wells wrote:
>> On 23/09/2021 21:17, Philip Hole wrote:
>
>>> Presumably I must ask my employer so sign a non-disclosure agreement
>>>without knowing what they were signing for.
>>>
>>> All very messy.
>> It's only a question of to whom the invention belongs, as I've just
>>explained elsewhere in this thread.  If your invention has nothing to
>>do with the company's business and is not created as part of your
>>employment, you own it and have to protect it yourself.  Your employer
>>can neither claim ownership of it nor disclaim any rights that they never had.
>> Section 39 of the Patents Act really isn't messy at all, and the
>>situation is actually very clear.
>
>When did it change?

What's the date on the current Act?

>My first corporate employer laid claim to every waking hour of their
>employees and *anything* that they invented related or unrelated to
>their work. Whether or not it was enforceable I do not know - to the
>best of my knowledge it was never tested in court.
>
>People did sometimes quit and then pop up soon after with some new
>invention though in spin off companies nearby (there was quite a
>cluster of them). It was a fairly heavily R&D establishment that owned
>a fair number of patents and one or two of them were extremely valuable.

--

Roland Perry

[Norman Wells]

On 24/09/2021 12:56, Martin Brown wrote:
> On 24/09/2021 08:53, Norman Wells wrote:
>> On 23/09/2021 21:17, Philip Hole wrote:
>
>>> Presumably I must ask my employer so sign a non-disclosure agreement
>>> without knowing what they were signing for.
>>>
>>> All very messy.
>>
>> It's only a question of to whom the invention belongs, as I've just
>> explained elsewhere in this thread.  If your invention has nothing to
>> do with the company's business and is not created as part of your
>> employment, you own it and have to protect it yourself.  Your employer
>> can neither claim ownership of it nor disclaim any rights that they
>> never had.
>>
>> Section 39 of the Patents Act really isn't messy at all, and the
>> situation is actually very clear.
>
> When did it change?

I don't think it did change, or at least not significantly. It was just
a codification of the position that had existed previously but hadn't
been written in legal tablets of stone.

> My first corporate employer laid claim to every
> waking hour of their employees and *anything* that they invented related
> or unrelated to their work. Whether or not it was enforceable I do not
> know - to the best of my knowledge it was never tested in court.

It would not have been enforceable against any ordinary employee. Maybe
a director or somoene of a very high level in the company would be
assumed to dedicate every waking moment to the company's well-being, but
not normally.

> People did sometimes quit and then pop up soon after with some new
> invention though in spin off companies nearby (there was quite a cluster
> of them). It was a fairly heavily R&D establishment that owned a fair
> number of patents and one or two of them were extremely valuable.

Then there could have been a conflict over when any invention was made
and to whom it legitimately belonged.

[Martin Brown]

But in terms of writing a book the OP would probably be OK asking his
former institution in writing for permission to use material that he
originated in the course of his work there. My guess is that they would
only require him to acknowledge their institution and might even want to
publish it. Most universities actively encourage lecturers to publish in
the peer reviewed literature and write textbooks if they get the chance.

The odd one even writes science fiction or thrillers in their spare
time. Catches unwary bulk book sellers out with paperback versions of
their textbooks sometimes having deliberately? ambiguous titles.

I can only think of one occasion where an institution took great
exception to an employee writing what was a very good set of 3
observational astronomy texts (still in use today by amateurs). They
threw him out shortly after they were published and he never really
recovered from that setback. Wiki description here is sanitised.

https://en.wikipedia.org/wiki/Robert_Burnham_Jr.#Life_after_Lowell

Considering how many copies of it were sold he did very badly indeed.

--
Regards,
Martin Brown

[Norman Wells]

On 24/09/2021 14:03, Roland Perry wrote:
> In message <sikee4$1c07$1...@gioia.aioe.org>, at 12:56:51 on Fri, 24 Sep
> 2021, Martin Brown <'''newspam'''@nonad.co.uk> remarked:
>> On 24/09/2021 08:53, Norman Wells wrote:
>>> On 23/09/2021 21:17, Philip Hole wrote:
>>
>>>> Presumably I must ask my employer so sign a non-disclosure agreement
>>>> without knowing what they were signing for.
>>>>
>>>> All very messy.
>>>  It's only a question of to whom the invention belongs, as I've just
>>> explained elsewhere in this thread.  If your invention has nothing to
>>> do  with the company's business and is not created as part of your
>>> employment, you own it and have to protect it yourself.  Your
>>> employer can neither claim ownership of it nor disclaim any rights
>>> that they never had.
>>>  Section 39 of the Patents Act really isn't messy at all, and the
>>> situation is actually very clear.
>>
>> When did it change?
>
> What's the date on the current Act?

1977

[newshound]

On 24/09/2021 16:32, Martin Brown wrote:

>
> I can only think of one occasion where an institution took great
> exception to an employee writing what was a very good set of 3
> observational astronomy texts (still in use today by amateurs). They
> threw him out shortly after they were published and he never really
> recovered from that setback. Wiki description here is sanitised.
>
> https://en.wikipedia.org/wiki/Robert_Burnham_Jr.#Life_after_Lowell
>
> Considering how many copies of it were sold he did very badly indeed.
>

What a sad story. Sounds like Asperger's.

[Martin Brown]

That is well before my first corporate employment contract which very
definitely laid claim to everything I might invent in my waking hours.
Other major UK companies had similar clauses in at the time.

I had it altered to exclude my pre-existing IP and any future work done
in my spare time related to it. HR didn't bat an eyelid - perhaps they
were a bit surprised that someone had read the thing cover to cover.

--
Regards,
Martin Brown

[notya...@gmail.com]

Maybe the IP belongs to the employee, but the right to exploit it to the employer, anyway one for the lawyers.

> > I had one a bit liKe this, having developed a solution to a problem in scan conversion for a UK company. After a visit to a university the company annoying decided not to patent or copyright the work assuming other would not catch up.

> Copyright subsits automatically on creation of the work and belongs to
> the author until he assigns it in writing to someone else, whether under
> a contractual obligation or not. There is no process to register or
> record it.

Part of the process was hardware, the software I wrote made it work correctly.

>
> As regards patenting it, if the invention belonged to the company, it's
> the company's decision, not yours, what to do with it.

True, but annoying at the time.

> > A few years later I was working elsewhere when the original company went into administration, but alas not liquidation, otherwise I would have been released from the contract and could have exploits my "invention".
> As a matter of law, no you wouldn't unless the liquidators released you
> from that obligation..

Well not if it were a saleable asset of the company, but if unsold the rights would revert to the crown and the memory of the company's ownership lost.

[Norman Wells]

If it belongs to the employee, it's for the employee to exploit it or
deal with it as he chooses.

>>> I had one a bit liKe this, having developed a solution to a problem in scan conversion for a UK company. After a visit to a university the company annoying decided not to patent or copyright the work assuming other would not catch up.
>> Copyright subsits automatically on creation of the work and belongs to
>> the author until he assigns it in writing to someone else, whether under
>> a contractual obligation or not. There is no process to register or
>> record it.
>
> Part of the process was hardware, the software I wrote made it work correctly.
>
>>
>> As regards patenting it, if the invention belonged to the company, it's
>> the company's decision, not yours, what to do with it.
>
> True, but annoying at the time.
>
>>> A few years later I was working elsewhere when the original company went into administration, but alas not liquidation, otherwise I would have been released from the contract and could have exploits my "invention".
>> As a matter of law, no you wouldn't unless the liquidators released you
>> from that obligation..
>
> Well not if it were a saleable asset of the company, but if unsold the rights would revert to the crown and the memory of the company's ownership lost.

It doesn't revert to the Crown. It is an asset for the liquidators to
deal with and it remains with them. If they choose to do nothing,
that's their right.

[Tim Jackson]

On Sat, 25 Sep 2021 19:06:25 +0100, Norman Wells wrote...

[rights in inventions]

> >>> A few years later I was working elsewhere when the original company went into administration, but alas not liquidation, otherwise I would have been released from the contract and could have exploits my "invention".
> >> As a matter of law, no you wouldn't unless the liquidators released you
> >> from that obligation..
> >
> > Well not if it were a saleable asset of the company, but if unsold the rights would revert to the crown and the memory of the company's ownership lost.
>
> It doesn't revert to the Crown. It is an asset for the liquidators to
> deal with and it remains with them. If they choose to do nothing,
> that's their right.

Well, yes. But notya was supposing that the liquidators do nothing,
perhaps not even realising that the company owned rights to any
invention.

If the company is then wound up without the matter being resolved, the
rights do indeed then revert to the crown.

I suspect that this is probably a rather rare situation. Before winding
the company up, wouldn't a competent liquidator normally make a catch-
all assignment of any residual assets they'd missed?

--
Tim Jackson
ne...@timjackson.invalid
(Change '.invalid' to '.plus.com' to reply direct)

[Tim Jackson]

On Thu, 23 Sep 2021 09:12:27 +0100, Norman Wells wrote...

>
> On 23/09/2021 08:25, Martin Harran wrote:
> > I recently retired from lecturing in a third level institution. My
> > student material - developed by me from scratch - was stored on and
> > delivered via the institution's facility on Blackboard, the online
> > framework for educational establishments. I have been asked to give
> > access to the relevant materials to a new lecturer who is taking over
> > one of the modules. I have no issue with doing that - on the contrary,
> > I thoroughly enjoyed my time with the institution and said at my
> > retirement that I was happy to give any lecturer access to any of my
> > materials.
> >
> > In the proverbial "interests of curiosity", however, I am wondering
> > what the legal position is; would IP rights as my employer allow the
> > institution to give access to another lecturer without my permission?
> >
> > Also, what rights do I now have to the material? I have my own
> > original copies, is there anything to prevent me including them, for
> > example, in a book or maybe some educational videos?
>
> You're talking about copyright, and that is governed by the Copyright,
> Designs and Patents Act 1988..
>
> The author of a work such as you describe is the copyright owner, and it
> remains his unless he assigns it in writing to someone else.

That follows from section 11(1), Copyright etc Act 1988.

> It's a matter of contract whether you are obliged to assign anything you
> created in connection with your work and employment to your employer.
> So, you need to go back and look at your contract of employment to see
> if that's the case.

No, that's the wrong way round. Section 11(1) has a proviso: it is
"...subject to the following provisions."

Section 11(2) then says:

"Where a literary, dramatic, musical or artistic work, or a film,
is made by an employee in the course of his employment, his
employer is the first owner of any copyright in the work subject
to any agreement to the contrary."

In that case, no assignment is necessary. The employer is automatically
the first owner of the copyright, and yes they would be entitled to let
another lecturer use your materials.

> It's a matter of contract whether you are obliged to assign anything you
> created in connection with your work and employment to your employer.
> So, you need to go back and look at your contract of employment to see
> if that's the case.

You are looking for the opposite. Does the contract of employment (or
any separate notice or agreement by the employer) say that you (the
employee) retain rights, despite section 11(2)? In the case of a
university or college that's possible, but you would have to enquire.

Even if there is nothing explicit, I suspect that many universities or
colleges would be willing to permit what you are proposing, if you ask.

Note that the above relates to copyright in lecture materials etc, which
seems to be the OP's main concern. Other parts of this thread have
diverged into a discussion of patentable inventions, where other
considerations are likely to apply.

[Norman Wells]

Yes, you're right. I'd overlooked that.

[notya...@gmail.com]

On Saturday, 25 September 2021 at 19:13:52 UTC+1, Norman Wells wrote:
> On 25/09/2021 17:57, notya...@gmail.com wrote:
> > On Friday, 24 September 2021 at 11:01:14 UTC+1, Norman Wells wrote:
> >> On 23/09/2021 15:15, notya...@gmail.com wrote:

SNIP

> >
> > Well not if it were a saleable asset of the company, but if unsold the rights would revert to the crown and the memory of the company's ownership lost.
> It doesn't revert to the Crown. It is an asset for the liquidators to
> deal with and it remains with them. If they choose to do nothing,
> that's their right.

It only while it remains with them, anything left when the company is finally dissolved becomes 'bona vacantia' and devolves on the crown https://www.gov.uk/government/organisations/bona-vacantia, this includes land.

This also applies if you die intestate without heirs.

[Digital Nomad]

What if the employee kept a patentable invention secret, left the
company and got a trusted relative/spouse to file a patent for it?

[Norman Wells]

The circumstances would render it invalid.

[Fredxx]

Please explain why?

There is no need for a third party to register the idea. All the
ex-employee is a plausible basis of coming up with the idea after he
left his employment.

Even gardening leave style contracts expect the employee to eventually
go onto another company and create IP for that company. Anything more
requires compensation.

[Tim Jackson]

On Fri, 1 Oct 2021 22:40:37 +0300, Digital Nomad wrote...

> What if the employee kept a patentable invention secret, left the
> company and got a trusted relative/spouse to file a patent for it?

The company can ask the Intellectual Property Office to decide whether
they are the people entitled to the patent.

If they win, they can either take over the patent application or patent
in their own name. Or they can ask for it to be refused or revoked,
perhaps preferring an application of their own.

It can get complicated, for example if each side has overlapping rights.

[Tim Jackson]

On Thu, 23 Sep 2021 09:36:10 +0100, Martin Brown wrote...

> You would have to look carefully at your original contract of employment
> but I would be surprised if they didn't lay claim to anything and
> everything you invent, create or develop in your waking hours by default
> (including things entirely unrelated to your own research).

In the case of an invention, such a clause would be unenforceable.
Patents Act 1977, section 42.

The circumstances in which the employer can claim ownership are
restricted by section 39.

[Digital Nomad]

On 02/10/2021 2:35, Tim Jackson wrote:
> On Fri, 1 Oct 2021 22:40:37 +0300, Digital Nomad wrote...
>
>> What if the employee kept a patentable invention secret, left the
>> company and got a trusted relative/spouse to file a patent for it?
>
> The company can ask the Intellectual Property Office to decide whether
> they are the people entitled to the patent.

What makes someone "entitled" to patent? It is not inconceivable that a
non-expert may come up with a disruptive innovation; a Google search of
these keywords would confirm this.

> If they win, they can either take over the patent application or patent
> in their own name. Or they can ask for it to be refused or revoked,
> perhaps preferring an application of their own.
>
> It can get complicated, for example if each side has overlapping rights.
>

Well there are at least two ways I can see something like this
happening. Employee talks to his wife about his work, wife may or may
not be an expert in the field. It is not uncommon for husbands/wives to
also share overlapping careers. Wife comes up with an idea and she
patents it in her name.

The other is that the employee comes up with the idea, perhaps leaves
the company, transfers the idea to his wife and then she patents it.

For the company to even begin disputing ownership of the patent they must:
1. Notice the patent
2. The relationship between the inventor and their former employee
3. Assume that the former employee came up with the idea whilst employed
with them
4. Prove the employee conceived the idea whilst employed with them
5. Prove the employee knowingly transferred it to his wife with the
intent to deprive the company of the IP. The wife can always claim it
was her idea and he never transferred it to her.

[Norman Wells]

On 02/10/2021 06:44, Digital Nomad wrote:
> On 02/10/2021 2:35, Tim Jackson wrote:
>> On Fri, 1 Oct 2021 22:40:37 +0300, Digital Nomad wrote...
>>
>>> What if the employee kept a patentable invention secret, left the
>>> company and got a trusted relative/spouse to file a patent for it?
>>
>> The company can ask the Intellectual Property Office to decide whether
>> they are the people entitled to the patent.
>
> What makes someone "entitled" to patent?

The law. Specifically, the Patents Act 1977.

[Norman Wells]

On 01/10/2021 22:43, Fredxx wrote:
> On 01/10/2021 22:06, Norman Wells wrote:
>> On 01/10/2021 20:40, Digital Nomad wrote:
>>> On 23/09/2021 11:36, Martin Brown wrote:
>>>> On 23/09/2021 08:25, Martin Harran wrote:
>>
>>>>> Also, what rights do I now have to the material? I have my own
>>>>> original copies, is there anything to prevent me including them, for
>>>>> example, in a book or maybe some educational videos?
>>>>
>>>> Again you would have to check your contract of employment. I don't
>>>> think any university ever prohibited lecturers publishing textbooks
>>>> (IME they positively encouraged it - mine had its own branded
>>>> publishing house).
>>>
>>> What if the employee kept a patentable invention secret, left the
>>> company and got a trusted relative/spouse to file a patent for it?
>>
>> The circumstances would render it invalid.
>
> Please explain why?

The person applying for the patent has no right to have it granted to
him. He is not the inventor, nor is he entitled to the invention by way
of being his employer.

See Sections 7 and 39 of the Patents Act 1977.

> There is no need for a third party to register the idea. All the
> ex-employee is a plausible basis of coming up with the idea after he
> left his employment.

Then why would he be getting a relative or spouse to apply? It's a sure
sign he knows it's wrong.

> Even gardening leave style contracts expect the employee to eventually
> go onto another company and create IP for that company.

The facts would come out in the wash.

> Anything more requires compensation.

No it doesn't. That's Section 40.

[Digital Nomad]

On 02/10/2021 11:05, Norman Wells wrote:
> On 01/10/2021 22:43, Fredxx wrote:
>> On 01/10/2021 22:06, Norman Wells wrote:
>>> On 01/10/2021 20:40, Digital Nomad wrote:
>>>> On 23/09/2021 11:36, Martin Brown wrote:
>>>>> On 23/09/2021 08:25, Martin Harran wrote:
>>>
>>>>>> Also, what rights do I now have to the material? I have my own
>>>>>> original copies, is there anything to prevent me including them, for
>>>>>> example, in a book or maybe some educational videos?
>>>>>
>>>>> Again you would have to check your contract of employment. I don't
>>>>> think any university ever prohibited lecturers publishing textbooks
>>>>> (IME they positively encouraged it - mine had its own branded
>>>>> publishing house).
>>>>
>>>> What if the employee kept a patentable invention secret, left the
>>>> company and got a trusted relative/spouse to file a patent for it?
>>>
>>> The circumstances would render it invalid.
>>
>> Please explain why?
>
> The person applying for the patent has no right to have it granted to
> him.  He is not the inventor, nor is he entitled to the invention by way
> of being his employer.
>
> See Sections 7 and 39 of the Patents Act 1977.
>

The same Section 7 says "Except so far as the contrary is established, a
person who makes an application for a patent shall be taken to be the
person who is entitled under subsection (2) above..."

So it would appear the burden of proof is on the disputing entity to
prove that the person wasn't the inventor and wasn't entitled to patent it.

>> There is no need for a third party to register the idea. All the
>> ex-employee is a plausible basis of coming up with the idea after he
>> left his employment.
>
> Then why would he be getting a relative or spouse to apply?  It's a sure
> sign he knows it's wrong.

It is possible that the relative or spouse may well be, as a matter of
fact, the true inventor. As I mentioned in another post, it is not
uncommon for disruptive innovations to come from non-experts in the field.

And, if the employee transferred the idea to their spouse or relative
even with intent to deprive their employer of the patent, it would be
difficult to detect and prove, and the employer has to have the will and
wherewithal to take a stab at claiming their IP.

If the patent is a billion dollar invention then it may fall under a lot
of scrutiny but even as a subset of successful patents, such patents are
rare indeed. Even a terrific idea is not enough, it has to sell lots,
sell profitably, and the business that exploits the IP has to do so
well. A patent worth a million or so will probably fall under the radar.

>> Even gardening leave style contracts expect the employee to eventually
>> go onto another company and create IP for that company.
>
> The facts would come out in the wash.
>
>> Anything more requires compensation.
>
> No it doesn't.  That's Section 40.

If the employee declares the invention whilst employed, the employee
gets whatever the employment contract stipulates, which is basically
peanuts (if s/he is lucky). This is clear.

If a spouse or trusted relative files that patent, then the negotiating
position of the employer to claim IP is weaker. Which means that even if
the patent becomes a billion dollar invention, there is room for
negotiation in favour of the inventors.

On a similar note, I personally know the founder of a successful
start-up who left his employer to form a start-up and was sued by his
employer for allegedly patenting what should have been his former
employer's. Before he was sued, he clearly flagged to investors in his
start-up that this was a potential risk. He got sued, and settled with
his former employers for an undisclosed sum. I guarantee you, what he
got in the settlement, is a lot better than what he would have gotten if
he patented it as an employee, plus he retains executive control over
exploitation of the IP.

[Norman Wells]

Shouldn't be difficult on the balance of probabilities. What a
coincidence that the spouse or relative just happened to make an
invention falling slap bang within the employer's field, and on just the
sort of subject matter that was the employee's responsibility!

It's so unlikely, the balance will have shifted so far over it almost
certainly won't be recoverable.

>>> There is no need for a third party to register the idea. All the
>>> ex-employee is a plausible basis of coming up with the idea after he
>>> left his employment.
>>
>> Then why would he be getting a relative or spouse to apply?  It's a
>> sure sign he knows it's wrong.
>
> It is possible that the relative or spouse may well be, as a matter of
> fact, the true inventor. As I mentioned in another post, it is not
> uncommon for disruptive innovations to come from non-experts in the field.

It's possible the sun won't rise tomorrow. It doesn't mean that is as
likely as the other alternative.

> And, if the employee transferred the idea to their spouse or relative
> even with intent to deprive their employer of the patent,

He can't transfer what isn't his.

> it would be difficult to detect and prove,

I don't think so at all.

> and the employer has to have the will and
> wherewithal to take a stab at claiming their IP.

t may not be worth bothering with but, if it is, it's about as easy as
it comes. There may also be criminal allegations of fraud as well.

>> The facts would come out in the wash.
>>
>>> Anything more requires compensation.
>>
>> No it doesn't.  That's Section 40.
>
> If the employee declares the invention whilst employed, the employee
> gets whatever the employment contract stipulates, which is basically
> peanuts (if s/he is lucky). This is clear.

No it isn't. He is entitled to what he's entitled to under Section 40.

> If a spouse or trusted relative files that patent, then the negotiating
> position of the employer to claim IP is weaker.

No it isn't. The fraud is ever more apparent.

> Which means that even if
> the patent becomes a billion dollar invention, there is room for
> negotiation in favour of the inventors.

It takes two to tango. If the employer has a cast-iron, easy to prove
case, he may well not choose to dance with someone who has set out to
defraud him.

[Fredxx]

On 02/10/2021 17:51, Digital Nomad wrote:

That was my thought entirely. It is shameful that some posters make
claims they cannot substantiate.

If someone who is not employed, or where they are employed in a
different field than their invention, and the patentee claims it is
their invention, then I don't see how an ex-employer can successfully
claim anything.

If the patentee claims it is their invention, they will have the right
to have the patent granted to them.

The Patents Act 1977 does have provision of a benefit from their
invention on behalf of their employer. A recent case:

https://www.mondaq.com/uk/patent/859716/inventing-employee-wins-2-million-compensation-for-outstanding-benefit-of-patents-in-uk-supreme-court

> If a spouse or trusted relative files that patent, then the negotiating
> position of the employer to claim IP is weaker. Which means that even if
> the patent becomes a billion dollar invention, there is room for
> negotiation in favour of the inventors.
>
> On a similar note, I personally know the founder of a successful
> start-up who left his employer to form a start-up and was sued by his
> employer for allegedly patenting what should have been his former
> employer's. Before he was sued, he clearly flagged to investors in his
> start-up that this was a potential risk. He got sued, and settled with
> his former employers for an undisclosed sum. I guarantee you, what he
> got in the settlement, is a lot better than what he would have gotten if
> he patented it as an employee, plus he retains executive control over
> exploitation of the IP.

Many thanks for your post.

[Tim Jackson]

On Sat, 2 Oct 2021 08:44:07 +0300, Digital Nomad wrote...

>
> What makes someone "entitled" to patent?

Start with section 7(2) of the Patents Act, which you've already found.

Primarily the person entitled is the inventor or joint inventors (the
"actual devisor", see section 7(3)).

Or, in preference to the inventor(s), there can be a wide variety of
reasons why the entitlement may lie with someone else instead. Section
7(2) gives a broad list, but it doesn't set out what applies when. You
have to look elsewhere for that.

For example, it might be because of employment if the circumstances are
as set out in section 39.

Or it might be because of some agreement or assignment between the
parties, either before or after the date of the invention. You'd have
to look at what they agreed (as long as it's not unenforceable under
section 42).

Or some foreign law might be applicable if the parties are not in the
UK.

If no such reason applies, you're still back with the inventor or joint
inventors.

> It is not inconceivable that a
> non-expert may come up with a disruptive innovation; a Google search of
> these keywords would confirm this.

Of course. You've suggested some hypothetical circumstances. The
actual outcome will be highly dependent on proving the precise facts of
each case, so it's difficult to comment. For example, how believable it
is that an employee's wife made the invention totally independently?
There may be evidence pointing either way. The civil standard of proof
is "on the balance of probabilities"; it doesn't have to be "beyond
reasonable doubt".

> >
> > It can get complicated, for example if each side has overlapping rights.
> >
>
> Well there are at least two ways I can see something like this
> happening.

Only two? As I said, it can get complicated.

[Tim Jackson]

On Sat, 2 Oct 2021 19:16:02 +0100, Fredxx wrote...

> If someone who is not employed, or where they are employed in a
> different field than their invention, and the patentee claims it is
> their invention, then I don't see how an ex-employer can successfully
> claim anything.

However, I understood Nomad to be suggesting the invention did lie in
the same field as the employment.

[Digital Nomad]

My pleasure. I re-read my post, and thought to clarify that the
inventor/founder of the start-up flagged to investors that being pursued
for the IP by his former employer was a potential risk, BEFORE they
invested. The investors thought his start-up was worth investing in
anyway, on the balance of upside/downside, and invested.

When this investment hit the news, it was then that the lawyers from the
founder's former employer came knocking. But at this stage, he had his
investors behind him, with money, and the common goal of wanting to keep
third parties out of claiming a share of the IP.

Investors also know that the enthusiasm of the inventor, plus him/her
staking their career arc on founding their start-up, are powerful
motivators, much more so than the business development folks in a large
organisation who have lots of ideas under their portfolio and get a
fixed salary at the end of the month.

[Fredxx]

On 02/10/2021 23:55, Tim Jackson wrote:
> On Sat, 2 Oct 2021 19:16:02 +0100, Fredxx wrote...
>
>> If someone who is not employed, or where they are employed in a
>> different field than their invention, and the patentee claims it is
>> their invention, then I don't see how an ex-employer can successfully
>> claim anything.
>
> However, I understood Nomad to be suggesting the invention did lie in
> the same field as the employment.

I am aware of this, but after he's left that employment, and this
ex-employee says they thought of the idea after they left this
employment[1], the old employer's claim to own the patent would be an
uphill struggle.

[1] Obviously the morality of making that claim would be poor.

[Norman Wells]

Bit difficult to claim it's his if it's his wife or relative who applied
for the patent, which I thought was the suggestion, isn't it?

It's a dead giveaway that the whole thing was dodgy, I'd have thought.

It comes down to facts, dates, contracts, circumstances etc. Few
inventions come about just as a bright idea. Most require development,
experiment and trial before they reach the stage of being patented.
Where was that done, in whose time, using whose facilities?

This would be a matter to be decided on the balance of probabilities.
He would have a lot of explaining to do.

[Owen Rees]

It may be true, especially after leaving an organisation that stifles
original thought through micro-management and preference for conventional
solutions.

[Digital Nomad]

And what is the morality of employers taking the idea of an employee
simply because of the asymmetry in power and wherewithal? If you don't
like the terms of the contract you can walk?

To the credit of the employer it is often argued that without the
resources or equipment of the employer, the employee would never have
come up with the invention.

But no one gives credit to the little guy/gal, without whom the idea
would never have been conceived for the employer to get their hands on.

I would argue with a 50-50 reward split as a starting point between the
employer and the inventor(s), with executive control over exploitation
of the patent going to the inventor(s). Exploitation and business
development costs split 50-50 as well, unless otherwise negotiated.

[Fredxx]

On 03/10/2021 15:19, Digital Nomad wrote:
> On 03/10/2021 2:59, Fredxx wrote:
>> On 02/10/2021 23:55, Tim Jackson wrote:
>>> On Sat, 2 Oct 2021 19:16:02 +0100, Fredxx wrote...
>>>
>>>> If someone who is not employed, or where they are employed in a
>>>> different field than their invention, and the patentee claims it is
>>>> their invention, then I don't see how an ex-employer can successfully
>>>> claim anything.
>>>
>>> However, I understood Nomad to be suggesting the invention did lie in
>>> the same field as the employment.
>>
>> I am aware of this, but after he's left that employment, and this
>> ex-employee says they thought of the idea after they left this
>> employment[1], the old employer's claim to own the patent would be an
>> uphill struggle.
>>
>> [1] Obviously the morality of making that claim would be poor.
>>
>
> And what is the morality of employers taking the idea of an employee
> simply because of the asymmetry in power and wherewithal? If you don't
> like the terms of the contract you can walk?

There is no asymmetry of power in these circumstances. The employee is
generally free to work for ever he chooses.

> To the credit of the employer it is often argued that without the
> resources or equipment of the employer, the employee would never have
> come up with the invention.

And the investment of putting the employee in the position of making the
invention, plus support from colleagues. It's rare for an invention to
come out of thin air. And if nothing to do with his employer's business
the patent is theirs. The only proviso is the higher you are in a
company, the broader the net the employer has to retain rights to your

invention.

> But no one gives credit to the little guy/gal, without whom the idea
> would never have been conceived for the employer to get their hands on.

Many companies value the persons with the idea. He is often promoted.

> I would argue with a 50-50 reward split as a starting point between the
> employer and the inventor(s), with executive control over exploitation
> of the patent going to the inventor(s). Exploitation and business
> development costs split 50-50 as well, unless otherwise negotiated.

After taking into consideration the investment required to put the
invention into practice, and the associated financial risk of failure,
I'm left asking 50% of what? The current 5% seems a good compromise
where the inventor has zero financial risk.

[Tim Jackson]

On Sun, 3 Oct 2021 17:19:01 +0300, Digital Nomad wrote...

> I would argue with a 50-50 reward split as a starting point between the
> employer and the inventor(s), with executive control over exploitation
> of the patent going to the inventor(s). Exploitation and business
> development costs split 50-50 as well, unless otherwise negotiated.

How about the patent rights belonging to the inventor if nothing to do
with the inventor's employment duties, or to the employer if s/he was
"paid to invent"?

And a system enabling the employee to apply for further compensation if
the invention belonged to the employer, but is subsequently shown to
have been of outstanding benefit?

Hint: with a few detailed ifs and buts, and how it works, that is
actually what the law says. Patents Act 1977, sections 39-42.

[Tim Jackson]

On Sun, 3 Oct 2021 16:18:15 +0100, Fredxx wrote...

> Digital Nomad wrote...

> > I would argue with a 50-50 reward split as a starting point between the
> > employer and the inventor(s), with executive control over exploitation
> > of the patent going to the inventor(s). Exploitation and business
> > development costs split 50-50 as well, unless otherwise negotiated.
>
> After taking into consideration the investment required to put the
> invention into practice, and the associated financial risk of failure,
> I'm left asking 50% of what? The current 5% seems a good compromise
> where the inventor has zero financial risk.

Where does your "current 5%" figure come from?

[Digital Nomad]

5% is a lot more than I was offered, which was just book vouchers per
patent.

Also, 5% of zero is still zero. IME the business development people in
large organisations don't give an excrement about whether the patent is
exploited or not. They have no incentive to; they get a salary every
month and there is no personal stake in seeing an invention bear fruit.

[Digital Nomad]

On 03/10/2021 18:18, Fredxx wrote:

>

> And the investment of putting the employee in the position of making the
> invention, plus support from colleagues. It's rare for an invention to
> come out of thin air. And if nothing to do with his employer's business
> the patent is theirs. The only proviso is the higher you are in a
> company, the broader the net the employer has to retain rights to your
> invention.
>

This does not bear up with reality of working in a large firm with
rivalries, jealousy, gossip and one-upmanship. Look up on Youtube, "The
curse of creativity" by Jordan Peterson. If you are creative, in general
you are probably miserable, unhappy, lonely and shunned. There are also
other studies linking creativity with loneliness, and even mental illness.

There is a very specific pain, seeing an invention of yours wrested from
your grasp like an abducted child, and watching the Business Development
morons do f- all while the patent expires. It is like getting the front
row seat watching your abducted child die of starvation when you can
legally do nothing.

[Fredxx]

On 03/10/2021 18:43, Tim Jackson wrote:
> On Sun, 3 Oct 2021 16:18:15 +0100, Fredxx wrote...
>
>> Digital Nomad wrote...
>>> I would argue with a 50-50 reward split as a starting point between the
>>> employer and the inventor(s), with executive control over exploitation
>>> of the patent going to the inventor(s). Exploitation and business
>>> development costs split 50-50 as well, unless otherwise negotiated.
>>
>> After taking into consideration the investment required to put the
>> invention into practice, and the associated financial risk of failure,
>> I'm left asking 50% of what? The current 5% seems a good compromise
>> where the inventor has zero financial risk.
>
> Where does your "current 5%" figure come from?

https://www.mondaq.com/uk/patent/859716/inventing-employee-wins-2-million-compensation-for-outstanding-benefit-of-patents-in-uk-supreme-court

[Fredxx]

On 03/10/2021 18:43, Tim Jackson wrote:

> On Sun, 3 Oct 2021 17:19:01 +0300, Digital Nomad wrote...
>
>> I would argue with a 50-50 reward split as a starting point between the
>> employer and the inventor(s), with executive control over exploitation
>> of the patent going to the inventor(s). Exploitation and business
>> development costs split 50-50 as well, unless otherwise negotiated.
>
> How about the patent rights belonging to the inventor if nothing to do
> with the inventor's employment duties, or to the employer if s/he was
> "paid to invent"?

That is the current law.

> And a system enabling the employee to apply for further compensation if
> the invention belonged to the employer, but is subsequently shown to
> have been of outstanding benefit?

If the patent owner can be shown not to exploit a patent it is possible
to make use of the patent for fair remuneration.

> Hint: with a few detailed ifs and buts, and how it works, that is
> actually what the law says. Patents Act 1977, sections 39-42.

Yes. You could have said this first!

[Martin Brown]

On 01/10/2021 22:06, Norman Wells wrote:

If it was related to their previous work then their employer would
almost certainly contest it. If it was for some random unrelated widget
then they would probably not bother (that was my experience anyway).

They don't have to do much to drive a fledgling company into the ground.
Tying up the inventors and senior management time may be enough.

> The circumstances would render it invalid.

There are ways and means. Several spins offs of the company that I once
worked for were pretty much suspected to be exactly that. It needs to be
"invented" and filed a plausible time after leaving your employer.

The daft one is when the employer ends up with the employees patent but
refuses to exploit a perfectly good invention (not our core business).

You do need an invention that is sufficiently worthwhile and have enough
credibility and contacts to raise the funds to develop it. A patent is
almost worthless if you cannot afford to enforce it or license it.

--
Regards,
Martin Brown

[Norman Wells]

If you were employed in a position where an invention might reasonably
be expected to result, you were paid to invent, so the invention rightly
belongs to your employer. They paid for it.

Otherwise, what useful work were you doing for the company when you were
busy inventing it?

It's a right of ownership to do what you like with what you own.

If your company decides not to do anything with it, that's their choice.
If you're aggrieved by that, either persuade them of the error of
their ways, or offer to buy it back from them to exploit it yourself in
your own business.

As for Peterson's sob story about poor creatives and how they suffer,
inventors don't qualify. It's a truth universally acknowledged that
inventions are 1% inspiration, 99% perspiration.

[Martin Brown]

He had to fight through the courts for that decision though. That is a
very risky thing to do against an employer with bottomless pockets.

It wasn't and still isn't standard practice. Some employers are much
better than others about how they treat their IP originators. Many take
the view that it is your job and you have traded the security of a fixed
monthly salary for your ideas and inventions that they then exploit.

I did know one chief scientist whose contribution to his company was so
significant that he drove an Aston Martin DB8 company car. His clever
patent made life incredibly difficult for all of our other competitors.

Your employer takes all the risks of manufacture, sales and marketing.
Not everything that gets invented sells even if on paper it should.

Poor old 3M invented a fabulous glow in the dark plastic pigment and
combined it with a filament bulb torch to make an emergency light that
you could always find even in total darkness. Not as good as tritiated
plastic because it needed to be in sunlight during the day but an
impressive feat of chemistry to make something that works so well.

The problem was that apart from sea farers so few people could imagine a
total darkness power cut that the thing was a total flop. The rise of
LED torches was the final nail in its coffin.

--
Regards,
Martin Brown

[Digital Nomad]

On 04/10/2021 13:02, Martin Brown wrote:
> On 04/10/2021 01:16, Fredxx wrote:
>> On 03/10/2021 18:43, Tim Jackson wrote:
>>> On Sun, 3 Oct 2021 16:18:15 +0100, Fredxx wrote...
>>>
>>>> Digital Nomad wrote...
>>>>> I would argue with a 50-50 reward split as a starting point between
>>>>> the
>>>>> employer and the inventor(s), with executive control over exploitation
>>>>> of the patent going to the inventor(s). Exploitation and business
>>>>> development costs split 50-50 as well, unless otherwise negotiated.
>>>>
>>>> After taking into consideration the investment required to put the
>>>> invention into practice, and the associated financial risk of failure,
>>>> I'm left asking 50% of what? The current 5% seems a good compromise
>>>> where the inventor has zero financial risk.
>>>
>>> Where does your "current 5%" figure come from?
>>
>> https://www.mondaq.com/uk/patent/859716/inventing-employee-wins-2-million-compensation-for-outstanding-benefit-of-patents-in-uk-supreme-court
>
>
> He had to fight through the courts for that decision though. That is a
> very risky thing to do against an employer with bottomless pockets.

It is rare to find an employee who will sue their employer, even for the
most justified cause. Firstly there is the asymmetry in resources as you
mentioned. Secondly their employer is in a position to make the
employee's present and future life hell in a variety of ways. Thirdly,
if the employee loses the lawsuit, the consequences would be dire
indeed. Lastly but probably not exhaustively, which subsequent employer
will want to hire an employee that sued their former employer, no matter
how justified? The whole thing stinks of trouble and most people don't
care about the details, only the stench.

> It wasn't and still isn't standard practice. Some employers are much
> better than others about how they treat their IP originators. Many take
> the view that it is your job and you have traded the security of a fixed
> monthly salary for your ideas and inventions that they then exploit.
>
> I did know one chief scientist whose contribution to his company was so
> significant that he drove an Aston Martin DB8 company car. His clever
> patent made life incredibly difficult for all of our other competitors.
>
> Your employer takes all the risks of manufacture, sales and marketing.
> Not everything that gets invented sells even if on paper it should.

In the cases I am intimately familiar with, investors and VCs wanted to
invest in the ideas, but the Business Development folk were just so
difficult to work with, in the end they scared all the investors away.

[Digital Nomad]

A patent can even be detrimental because of the public disclosure. If
the inventor doesn't have the means to both develop it to a viable
product, and also prosecute potential infringement then one needs to
examine carefully whether patenting is the right option.

Furthermore, you will have to file patents in the separate jurisdictions
you want protection in, which can become vary rapidly a costly affair.

[Martin Brown]

On 04/10/2021 09:48, Norman Wells wrote:
> On 03/10/2021 21:19, Digital Nomad wrote:
>> On 03/10/2021 18:18, Fredxx wrote:
>>
>>>
>>> And the investment of putting the employee in the position of making
>>> the invention, plus support from colleagues. It's rare for an
>>> invention to come out of thin air. And if nothing to do with his
>>> employer's business the patent is theirs. The only proviso is the
>>> higher you are in a company, the broader the net the employer has to
>>> retain rights to your invention.
>>

>> There is a very specific pain, seeing an invention of yours wrested
>> from your grasp like an abducted child, and watching the Business
>> Development morons do f- all while the patent expires. It is like
>> getting the front row seat watching your abducted child die of
>> starvation when you can legally do nothing.
>
> If you were employed in a position where an invention might reasonably
> be expected to result, you were paid to invent, so the invention rightly
> belongs to your employer.  They paid for it.
>
> Otherwise, what useful work were you doing for the company when you were
> busy inventing it?
>
> It's a right of ownership to do what you like with what you own.

Although it flies in the face of the original intent of patents - to
share the knowledge of how to exploit an invention for the wider public
good. It is particularly vexing when corporate beancounters decide that
it is not a part of the core business (chemical manufacturer) to license
patents for eg life saving equipment to a willing local manufacturer.

The patent had to expire before they could make and sell the device.

> If your company decides not to do anything with it, that's their choice.
>  If you're aggrieved by that, either persuade them of the error of
> their ways, or offer to buy it back from them to exploit it yourself in
> your own business.

Typically they won't sell or even license the "irrelevant" patents that
they hold. US corporates where inventors have numerical targets of
inventions per N years have some exceptionally bad ones. Computer and
software related patents are particularly bad for the examiners not
knowing (or caring) where to find the prior art. Xerox for example holds
a patent on the mathematical identity X + (-X) = 0 couched in suitably
obscure phrasing so that it got through the USPTO unscathed.

Dollars in sufficient quantity and not obviously a perpetual motion
machine will do nicely over there (even that is a recent improvement).

Amazon famously has a US patent for photographing objects for sale
against a white background (you couldn't make it up).

https://www.telegraph.co.uk/technology/amazon/10820216/Amazon-patents-taking-photos-against-white-backgrounds.html

> As for Peterson's sob story about poor creatives and how they suffer,
> inventors don't qualify.  It's a truth universally acknowledged that
> inventions are 1% inspiration, 99% perspiration.

I'm not sure that is true. More like 50:50 - major inventions are fairly
obvious after they have been invented and made to work. What is tricky
is finding a novel way to do something difficult for the first time.

The patent that got the guy his Aston Martin enabled mass spectrometers
to be constructed that had a focal plane perpendicular ion beam axis
(and involved some diabolical fringe field integrals). Making the pole
pieces was fairly easy with CNC machines once the curves were found.

Up until that point people had to live with the natural focal plane
being at a horrible shallow angle to the main axis of the machine. The
decision not to license that patent to competitors (and then to obtain
an extension) was entirely rational. It was their main USP.

It made all the complex multidetector engineering so much simpler.

--
Regards,
Martin Brown

[Digital Nomad]

To the contrary, I had a standard set of R&D duties. The inventions I
came up with were above and beyond what I was tasked to do, in some
cases utterly unrelated to my field of work; the "weekend invention"
type of invention which like an idiot I gave over to them.

> It's a right of ownership to do what you like with what you own.
>
> If your company decides not to do anything with it, that's their choice.
>  If you're aggrieved by that, either persuade them of the error of
> their ways, or offer to buy it back from them to exploit it yourself in
> your own business.

I did the legwork for the Business Development people and even brought
investors who *wanted* to spend money on the ideas.

> As for Peterson's sob story about poor creatives and how they suffer,
> inventors don't qualify.  It's a truth universally acknowledged that
> inventions are 1% inspiration, 99% perspiration.

Spoken like a true expert.

BTW in this case there is no perspiration from the BD people.

[Norman Wells]

Which won't be too far down the road. If the employer isn't interested
in exploiting or licensing it, it either won't bother pursuing the
patent application through examination to grant, or won't pay the annual
renewal fees. When it lapses, it is of course open for anyone then to
exploit the invention as disclosed in the patent specification, which
perfectly fulfils what you regard as the original intent of patents.

While it's alive it's of course open to the 'willing local manufacturer'
to approach the company and seek a licence. An offer of free money like
that for little or no effort is unlikely to be rejected.

>> If your company decides not to do anything with it, that's their
>> choice.   If you're aggrieved by that, either persuade them of the
>> error of their ways, or offer to buy it back from them to exploit it
>> yourself in your own business.
>
> Typically they won't sell or even license the "irrelevant" patents that
> they hold.

They probably won't put much effort into it, and probably not as much as
would be required to exploit an invention which isn't really their
scene. If they had someone come to their door saying look, I'll give
you £50K a year if you'll license it to me, who's going to say no?

> US corporates where inventors have numerical targets of
> inventions per N years have some exceptionally bad ones. Computer and
> software related patents are particularly bad for the examiners not
> knowing (or caring) where to find the prior art. Xerox for example holds
> a patent on the mathematical identity X + (-X) = 0 couched in suitably
> obscure phrasing so that it got through the USPTO unscathed.

Not all patents that are granted are valid.

I doubt if your interpretation of the patent in question is correct, but
it will be invalid and unenforceable if it covers anything that was not
new or was obvious at its date of application. That's the fundamental rule.

> Dollars in sufficient quantity and not obviously a perpetual motion
> machine will do nicely over there (even that is a recent improvement).
>
> Amazon famously has a US patent for photographing objects for sale
> against a white background  (you couldn't make it up).
>
> https://www.telegraph.co.uk/technology/amazon/10820216/Amazon-patents-taking-photos-against-white-backgrounds.html

The same applies.

>> As for Peterson's sob story about poor creatives and how they suffer,
>> inventors don't qualify.  It's a truth universally acknowledged that
>> inventions are 1% inspiration, 99% perspiration.
>
> I'm not sure that is true. More like 50:50 - major inventions are fairly
> obvious after they have been invented and made to work. What is tricky
> is finding a novel way to do something difficult for the first time.

"A century ago, Thomas Edison thought deeply about what drives invention
or, as we call it today, innovation. One of his famous sayings, “Genius
is 1 percent inspiration and 99 percent perspiration,” stresses that
innovation involves more than just great ideas. Edison knew from his own
experience that the systematic hard work of trial-and-error
experimentation paid off. His inventions, like the lightbulb and the
phonograph, emerged through thousands of attempts as he refined the
process step by step."

https://www.strategy-business.com/article/li00010

> The patent that got the guy his Aston Martin enabled mass spectrometers
> to be constructed that had a focal plane perpendicular ion beam axis
> (and involved some diabolical fringe field integrals). Making the pole
> pieces was fairly easy with CNC machines once the curves were found.
>
> Up until that point people had to live with the natural focal plane
> being at a horrible shallow angle to the main axis of the machine. The
> decision not to license that patent to competitors (and then to obtain
> an extension) was entirely rational. It was their main USP.
>
> It made all the complex multidetector engineering so much simpler.

Then he deserves everything he got.

[Tim Jackson]

On Mon, 4 Oct 2021 12:18:38 +0100, Martin Brown wrote...

> Xerox for example holds
> a patent on the mathematical identity X + (-X) = 0 couched in suitably
> obscure phrasing so that it got through the USPTO unscathed

Do you have a patent number so we can check what it really covers? This
mathematical identity is obviously unpatentable in itself. So I'm
guessing that the "obscure phrasing" has been misunderstood by your
sources, and actually defines something much more limited.

> Amazon famously has a US patent for photographing objects for sale
> against a white background (you couldn't make it up).

But you could grossly over-simplify the truth, which is what someone has
apparently done here.

I can't access your newspaper link, but a quick Google search suggests
that people who make this claim are referring to US Patent No. 8,676,045
"Studio arrangement"
https://worldwide.espacenet.com/patent/search?q=us8676045

Click the 'Claims' tab to see the monopoly granted by this patent. It
is limited to studios having specific defined arrangements of multiple
front and rear light sources, in a cyclorama (a concave curved
background). The cyclorama is not necessarily white, see claims 2 or
23, though that might be preferred.

[Tim Jackson]

On Mon, 4 Oct 2021 14:54:14 +0300, Digital Nomad wrote...

> To the contrary, I had a standard set of R&D duties. The inventions I
> came up with were above and beyond what I was tasked to do, in some
> cases utterly unrelated to my field of work; the "weekend invention"
> type of invention which like an idiot I gave over to them.

There may be more than meets the eye here. But at face value, this is
not so much a problem with the law, more a failure to apply it in your
case.

[Norman Wells]

Then go and get them back. If they're really yours, you can contest
their ownership.

>> It's a right of ownership to do what you like with what you own.
>>
>> If your company decides not to do anything with it, that's their
>> choice.   If you're aggrieved by that, either persuade them of the
>> error of their ways, or offer to buy it back from them to exploit it
>> yourself in your own business.
>
> I did the legwork for the Business Development people and even brought
> investors who *wanted* to spend money on the ideas.

Paid employment surely? You do things for your company, they pay you.
It's quite usual.

>> As for Peterson's sob story about poor creatives and how they suffer,
>> inventors don't qualify.  It's a truth universally acknowledged that
>> inventions are 1% inspiration, 99% perspiration.
>
> Spoken like a true expert.

Thank you.

Just echoing the words of one of the great inventors, Thomas Edison, who
knew a bit about it.

> BTW in this case there is no perspiration from the BD people.

Someone must have done some development on the invention before it was
at the stage when it could be patented.

The rest is commercial stuff that is neither inspiration nor perspiration.

[Digital Nomad]

Sadly, you are mistaken. IME, renewal of patents in a large R&D
organisation is routinely rubber stamped. The budget for this is already
allocated, in many regards all but ringfenced, and rarely does upper
management look at the fine details of the core patents which keep the
business alive, and keeping others which may or may not be useful,
going. In the books it just goes under patent renewals and they all
collectively get approved.

> While it's alive it's of course open to the 'willing local manufacturer'
> to approach the company and seek a licence.  An offer of free money like
> that for little or no effort is unlikely to be rejected.
>
>>> If your company decides not to do anything with it, that's their
>>> choice.   If you're aggrieved by that, either persuade them of the
>>> error of their ways, or offer to buy it back from them to exploit it
>>> yourself in your own business.
>>
>> Typically they won't sell or even license the "irrelevant" patents
>> that they hold.
>
> They probably won't put much effort into it, and probably not as much as
> would be required to exploit an invention which isn't really their
> scene.  If they had someone come to their door saying look, I'll give
> you £50K a year if you'll license it to me, who's going to say no?

Without going into too much details because that would identify the
company I used to work for, £50K a year is peanuts compared to what the
Commercial folks were offered by investors.

Suffice to say the investors wanted to buy the patent from the company
for a sum a few orders of magnitude larger, the company refused, the
investors walked and the patent sits unused to this day.

I left the company and the country a year later and another co-inventor
retired; both of us would rather the patent expire and everyone gets to
use it, than the status quo. And neither of us will work to develop the
technology any more because of the bad taste in our mouths, so even if
the Business Development folks now find the motivation to do something
about it, neither expert they had on the matter will help them.

In patent squatting at least the patent squatter derives some benefit
from it, in this case pure corporate bullheadedness, stupidity and
unwillingness to listen meant no one gets any benefit from anything.

Professionally, none of the people in the Business Development unit even
tried to open their own start-up. So why are they being put in charge of
commercialising technologies?

You are comparing apples to oranges. Genius is not the same as
inventiveness/creativity.

The world is full of specialists who are experts in their field. Medical
specialists, professors, etc. Go look at the CVs of professors, it is a
smaller subset of professors with multiple patents in their name that
are the creative ones.

Ideas that are both novel and useful come from people who are at the
intersection of two rare sets of people; people who are creative and
intelligent.

A good example of a creative genius would be Nikola Tesla, but his
life's story corroborates what psychology tells us about the tragedy of
creative people.

[Norman Wells]

On 04/10/2021 16:27, Digital Nomad wrote:
> On 04/10/2021 16:43, Norman Wells wrote:
>> On 04/10/2021 12:18, Martin Brown wrote:

>>> The patent had to expire before they could make and sell the device.
>>
>> Which won't be too far down the road.  If the employer isn't
>> interested in exploiting or licensing it, it either won't bother
>> pursuing the patent application through examination to grant, or won't
>> pay the annual renewal fees.  When it lapses, it is of course open for
>> anyone then to exploit the invention as disclosed in the patent
>> specification, which perfectly fulfils what you regard as the original
>> intent of patents.
>
> Sadly, you are mistaken. IME, renewal of patents in a large R&D
> organisation is routinely rubber stamped. The budget for this is already
> allocated, in many regards all but ringfenced, and rarely does upper
> management look at the fine details of the core patents which keep the
> business alive, and keeping others which may or may not be useful,
> going. In the books it just goes under patent renewals and they all
> collectively get approved.

That's never been the case in any company I've been involved with. If
it is in some, then they are mismanaged. It's paying good money for
nothing worthwhile.

>> While it's alive it's of course open to the 'willing local
>> manufacturer' to approach the company and seek a licence.  An offer of
>> free money like that for little or no effort is unlikely to be rejected.
>>
>>>> If your company decides not to do anything with it, that's their
>>>> choice.   If you're aggrieved by that, either persuade them of the
>>>> error of their ways, or offer to buy it back from them to exploit it
>>>> yourself in your own business.
>>>
>>> Typically they won't sell or even license the "irrelevant" patents
>>> that they hold.
>>
>> They probably won't put much effort into it, and probably not as much
>> as would be required to exploit an invention which isn't really their
>> scene.  If they had someone come to their door saying look, I'll give
>> you £50K a year if you'll license it to me, who's going to say no?
>
> Without going into too much details because that would identify the
> company I used to work for, £50K a year is peanuts compared to what the
> Commercial folks were offered by investors.
>
> Suffice to say the investors wanted to buy the patent from the company
> for a sum a few orders of magnitude larger, the company refused, the
> investors walked and the patent sits unused to this day.

Then it is available for compulsory licences to be granted under it, ie
whether the company agrees or not. See Section 48 et seq of the Patents
Act 1977. It's a provision to mitigate such inactivity.

[Martin Brown]

They had an IP department that ensured every patent that was valid went
through the full course. They only applied to extend those perceived by
the system to have material value. ISTR a ~14 year delay ensued.

They didn't maintain it for the full 20 years because they ceased to
exist in that form and the new company split stopped annual renewals of
seemingly irrelevant patents and downsized its patent team.

> While it's alive it's of course open to the 'willing local manufacturer'
> to approach the company and seek a licence.  An offer of free money like
> that for little or no effort is unlikely to be rejected.

They did and they were. We are talking about a very large former British
multinational chemical company here and local management had little say.

>>> If your company decides not to do anything with it, that's their
>>> choice.   If you're aggrieved by that, either persuade them of the
>>> error of their ways, or offer to buy it back from them to exploit it
>>> yourself in your own business.
>>
>> Typically they won't sell or even license the "irrelevant" patents
>> that they hold.
>
> They probably won't put much effort into it, and probably not as much as
> would be required to exploit an invention which isn't really their
> scene.  If they had someone come to their door saying look, I'll give
> you £50K a year if you'll license it to me, who's going to say no?

Former major British chemicals company (no longer with us). Although
high handedness with patent licensing wasn't what did for them.

>> US corporates where inventors have numerical targets of inventions per
>> N years have some exceptionally bad ones. Computer and software
>> related patents are particularly bad for the examiners not knowing (or
>> caring) where to find the prior art. Xerox for example holds a patent
>> on the mathematical identity X + (-X) = 0 couched in suitably obscure
>> phrasing so that it got through the USPTO unscathed.
>
> Not all patents that are granted are valid.
>
> I doubt if your interpretation of the patent in question is correct, but
> it will be invalid and unenforceable if it covers anything that was not
> new or was obvious at its date of application.  That's the fundamental
> rule.

The relevant prior art was in the astronomical literature and predated
their patent application by more than a decade. And anyway disguised
mathematical identities are not patentable (except in America).

>> Dollars in sufficient quantity and not obviously a perpetual motion
>> machine will do nicely over there (even that is a recent improvement).
>>
>> Amazon famously has a US patent for photographing objects for sale
>> against a white background  (you couldn't make it up).
>>
>> https://www.telegraph.co.uk/technology/amazon/10820216/Amazon-patents-taking-photos-against-white-backgrounds.html
>
>
> The same applies.

USPTO will patent pretty much anything if you pay them to do it. That
included perpetual motion machines until fairly recently.

>>> As for Peterson's sob story about poor creatives and how they suffer,
>>> inventors don't qualify.  It's a truth universally acknowledged that
>>> inventions are 1% inspiration, 99% perspiration.
>>
>> I'm not sure that is true. More like 50:50 - major inventions are
>> fairly obvious after they have been invented and made to work. What is
>> tricky is finding a novel way to do something difficult for the first
>> time.
>
> "A century ago, Thomas Edison thought deeply about what drives invention
> or, as we call it today, innovation. One of his famous sayings, “Genius
> is 1 percent inspiration and 99 percent perspiration,” stresses that
> innovation involves more than just great ideas. Edison knew from his own
> experience that the systematic hard work of trial-and-error
> experimentation paid off. His inventions, like the lightbulb and the
> phonograph, emerged through thousands of attempts as he refined the
> process step by step."
>
> https://www.strategy-business.com/article/li00010

Mostly he did it by having a factory of inventors that he took all the
credit for. He was a very good self publicist and businessman unlike the
poor unfortunate Tesla who although correct in several iportant
instances always seemed to be trounced by Edison's self aggrandisement.

We should be very glad Telsa's alternating current electric power won in
the end. Edison's DC system would have been impossible to scale. He did
some pretty whacky animal electrocution stunts to discredit Tesla:

https://www.wired.com/2008/01/dayintech-0104/

http://content.time.com/time/specials/packages/article/0,28804,1999143_2002893_2002888,00.html

Edison mainly electrocuted stray cats and dogs for his anti-Westinghouse
campaign against AC electric power.

>
>> The patent that got the guy his Aston Martin enabled mass
>> spectrometers to be constructed that had a focal plane perpendicular
>> ion beam axis (and involved some diabolical fringe field integrals).
>> Making the pole pieces was fairly easy with CNC machines once the
>> curves were found.
>>
>> Up until that point people had to live with the natural focal plane
>> being at a horrible shallow angle to the main axis of the machine. The
>> decision not to license that patent to competitors (and then to obtain
>> an extension) was entirely rational. It was their main USP.
>>
>> It made all the complex multidetector engineering so much simpler.
>
> Then he deserves everything he got.

Oh yes. It was a brilliant invention.

--
Regards,
Martin Brown

[Tim Jackson]

On Tue, 5 Oct 2021 10:42:43 +0100, Martin Brown wrote...

> And anyway disguised
> mathematical identities are not patentable (except in America).

Mathematical identities as such are not patentable anywhere (including
America).

What may be patentable is some new physical product or process which
happens to make use of a mathematical identity in a novel and non-
obvious way.

Unfortunately, critics often fail to appreciate the difference, perhaps
because they don't read and understand the claims which define and limit
the scope of the patent. (See for example my response to your Amazon
example.)

By the way, at one time the examination of such claims in the USA was
criticised for being too lax. However, as a result of successive
controversial court decisions, US practice is now criticised for being
too restrictive. To the extent that it is stifling research and
development of new products. Why would anyone invest potentially
millions of dollars in R&D, if the results can then be freely copied by
anyone and there is no opportunity to recoup the R&D investment?