Legal Question in Intellectual Property in Illinois

My former employer terminated me several years ago right after I help develop a product that they are now selling in major retail stores across the US. They recently got in touch with me and said they needed my signature on the final patent for the previously mentioned product. Needless to say, after my departure, this employer became number one on my list of companies I hate and despise. My questions though are...1) I'm I required to sign this patent even though I was terminated or can I at least make them pay me for my cooperation. 2) If I don't have any leverage to make them pay me, what happens if I just don't sign off on the patent.

Asked on 7/02/13, 3:01 pm

2 Answers from Attorneys

Patrick Tracy Patrick J. Tracy, Esq, P.E.,

This is a very nasty situation where there is animosity between employee and employer. I do not know what kind of employment agreement that you signed when you went to work for the company. There are provisions under the patent statutes whereby an employee refuses to sign a patent application. In many cases unless there is malice or deceipt on the part of the company they can file an affidavit to the effect that the employee refuses to sign the application and the company can file on his behalf.

This is the general rule, how this applies to you I cannot say because the details of your case are unknown to me.

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Answered on 7/03/13, 8:00 am

Bruce Burdick Burdick Law Firm

The relevant statutory provision 35 USC 115(d)(2) states:

"(2) Permitted circumstances.— A substitute statement under paragraph (1) is permitted with respect to any individual who—

(A) is unable to file the oath or declaration under subsection (a) because the individual—

(i) is deceased;

(ii) is under legal incapacity; or

(iii) cannot be found or reached after diligent effort; or

(B) is under an obligation to assign the invention but has refused to make the oath or declaration required under subsection (a).

The company does not need you to sign anything more. Your status as employee at the time you invented obligates you to assign the invention to them and you likely signed an employee agreement obligating you to cooperate with them. They can file a substitute statement in lieu of your declaration or oath of inventorship. The "substitute statement" is what the applicant (which will be the company) files saying (B) applies.

However, you can certainly insist on them compensating you and refuse to sign anything if they don't. If you insist on getting compensated for signing, I would think you should ask for about $500, on the basis that you need to review the patent application and claims before you can properly sign an oath that you have read and understood the application. Generally, they will pay you some amount to sign as it will probably cost them around $500 in legal fees to go through the hassle of filing a substitute statement.

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Answered on 7/03/13, 3:50 pm

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