• Ownership rights on a patent

Hi,

I have an idea to develop a product which can be a game changer and for which I should receive a life changing money as well if its a unique and eligible idea. I have seen some templates and documented it with some drawings and specifications.

Now the problem is I work for an IT company and according to the employment terms I have to surrender all the intellectual property, which I develop either in office or at home, to the company. And I am not excited to hear the reward they will be giving to me (1000 USD at max).

I would request everybody to give me suggestions on how should I maximize my returns and is there any way by which I can be the owner and complete authority to use my idea?

Another Question is if I give my idea to my company and they get it patented, can I sell the rights of the product to anybody else in future?

Thanks
Amit Sharma
Asked 2 years ago in Intellectual Property from Bangalore, Karnataka
Dear Amit Sharma,

I had yesterday given you a clear cut reply. If you are looking at a process wherein you can circle round the terms and conditions of the company you are working for, then you shall be calling for trouble.

If the product or process is invented during your tenure in the office (IT Company), then the proprietary right is of the company you work for.

Further, there is no legal way to circle round and obtain the patent in your name. However, you can negotiate with your company about the percentage claim in the patent that you have invented, that is another issue. There is no way you can be the owner of the patent if the applicant is your company. You  can be the owner if you file for the patent in your name which you can do without letting the company know and keep it confidential till your patent is filed and published which will be highly unethical and will be not as per law. However, the troubles that you will be looking for are:

1) Your company will know once the patent is published and you may stand to lose your job.
2) You many attract penal action by your company
3) You may be jailed

Further, if your company gets a patent, then you cannot sell the rights of your product to anyone else as you do not have any right over the patent.

What best you can do is talk with out with your company to license your invention to them on a royalty basis for 20 years. That's the best you can do because what you are trying to do here is commit an offence of cheating your company. It was the company's resources that you used to develop the idea or the patent, even if you didn't use the company's resources, the invention clicked into your mind because of a lacunae that you might have observed during a project or in general during your working in the company which legally means that the patent if granted is of the company.

And my humble request to you Mr. Sharma is not to indulge in any unlawful activities rather talk it out with your company for a license fee or a bigger percentage in royalty.

I hope good sense prevail on you and may you succeed to create more inventions.

I hope the above satisfies your question

Thanks

Sidharth Das
IPR Advocate
Sidharth Das
Advocate, Kolkata
21 Answers
1 Consultations
5.0 on 5.0
Dear Amit Sharma,

First and foremost, the product that you have conceptualized,

1) How did you arrive at the conceptualization? Was it because you saw some lacunae during your working tenure at your company and wanted to improvise on it? If yes, then your company has the right to the patent and you can be named as the inventor

2) How much time have you devoted to the conceptualization of the product? Did some of the time that was devoted fell within the working hours? If yes, then your company will have the right to the patent

3) How did you devise the product? Did you not use any of the company's resources like internet or any software? If the answer is no, then you have a right over the patent

Secondly, there are two things that you have asked and I will try to answer them one by one

1) If you want to dedicate it to your organization without thinking of any monetary benefits, its entirely your choice. I cannot guarantee a promotion or any benefits on your company's behalf if you did the patent through them. Its solely the company's outlook. Further, it would depend on your negotiation skills with your company as to how much benefit can you extract from them in lieu of the patent rights that you hand over to them.

2) Yes, you can ask your wife to get it patented in her name only if as per your statements the patent has no relation whatsoever to your company but the problem that might arise later are:
        
         a) How will you utilize your patent because as per Patents Act, 2005 every two years you have to show working of your patent once its stands granted. This is in place so as to enhance the commercial value of the patent bringing in prosperity to the inventor, patentee, the country and the end users. Many people cannot market their patent because they cannot show any demo run and it becomes a problem for them to market. Marketing to the government will fetch you a paltry sum in most of the cases. Further, even if you give it to the company, and your company is not related to the patent, then it will patent the product and just sit on it, the patent will have no value. Ultimately a patent troll will be created.

        b) Go for a good IPR Advocate and disclose the invention to him who will help you patent and also help you market your product so that the benefit that you are actually looking for is realized. But please do remember not to disclose the invention to anyone except your advocate before filing it.

        c) Last but not the least, do you have enough money to get it patented. On a fast track basis, the government fees for filing, request for exam, request for publication will be somewhere around 19,000 INR + Advocate's Fees for drafting the complete specification + Attending to Exam Reports + Attending Hearings + Procurement of Letters Patent + others which I will divulge to you once you make up your mind

I hope the above helps

Thank You

Sidharth Das
IPR Advocate
Sidharth Das
Advocate, Kolkata
21 Answers
1 Consultations
5.0 on 5.0

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