Legal Question in Intellectual Property in California

Patent issue: How bad is this?

- I had an invention for a medical device and got together with a cardiologist and a marketing woman to write a government proposal

- For that, we decided to found a company around this device and tried to get VC money

- After one year of unsuccessful money hunting we had disagreements how we should go further and I left company.

- Within that year, I made drawings and explained processes used in proposals and presentations. Nobody got paid during this year. Only expenses.

- After I left, the remaining two founders sill operate as VP’s and just filed a provisional patent using all my drawings and processes, even though I clearly mentioned that this was my “ prior invention” and that I wanted it to remain as trade secret.

- What are my rights regarding the IP?

Asked on 5/20/10, 4:07 pm

3 Answers from Attorneys

Maria Kao Feldsott & Lee

Dear Sir,

Without knowing more specific details about your case, it would appear that your rights to your inventions are being breached if you are indeed trying to maintain these processes as a trade secret. However, the problematic part is evidence. If you cannot prove that there is an agreement in place or that there was even effort to maintain the trade secret, then it could very well be argued that it was not a secret to begin with.

There is obviously a more nuanced discussion that follows. There are a lot of things to consider. Only upon a full presentation of what you have in terms of evidence can an attorney fully gauge your situation.

Thank you.

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Answered on 5/25/10, 11:00 am
Terry A. Nelson Nelson & Lawless

Your 'rights' are to try to claim ownership and compensation from the company for your IP work product, if and when they ever make use of it and make any money from it. Without you having obtained proper protection through patent, copyright and trademark filings, registration, maintenance of confidentiality, contracts and agreements, etc., you will have difficulty doing so. Failure to do all these things properly is what generates expensive litigation or loss of rights. Your first step is having your attorney make claim and demand on the company. If serious about doing this, feel free to contact me to discuss your rights and remedies.

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Answered on 5/25/10, 12:16 pm
James Bame San Diego Law Office

You should sue to dissolve the partnership or LLC or whatever form the company is in and claim ownership of your invention or receive compensation for it. Contact me directly.

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Answered on 5/26/10, 1:41 pm

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