Legal Question in Intellectual Property in Massachusetts
I work in Massachusetts as a software engineer. �A former employer submitted a patent application with me listed as one of the inventors. �This occurred after I left the company and I was asked to come back in and sign some paperwork. �There was a signed agreement when I started there to assign inventions to them and to agree to help them in any patent process, so I went ahead and signed the patent paperwork. �Because I was at this company for a short time and my role in the work was very limited, I actually completely forgot about it.
I started my current job in 2007, and did not list this "invention" as part of their disclosure paperwork when I started. �I recently received another request from this former employer to sign some additional paperwork for the patent (for some additional filing they're doing in Japan). �When I went back and read through the patent application, I realized that many claims contained in the patent could be construed to overlap with a new project that is starting at my current job, and there is a remote chance that in the future both companies could wind up in direct competition in the future.
I do expect to be assigned a significant role in developing this new project. �So�my question is what impact can I expect when disclosing this prior "invention" to my current employer now? �The non-compete I signed with my previous employer has long since expired, so really my concern is whether there's any additional liability to me personally or to my current employer because i'm listed as an inventor of this patent. �Also, would there b any ramifications from my failure to notify them earlier?
In general, is there any material difference between a patent application being filed and the patent actually being approved? �Am I required to disclose any and all patent applications where I was listed as an inventor, or only those instances where a patent has been approved?�
1 Answer from Attorneys
This is not a great situation for your new company. Patent infringement is bad for business. The fact that you work there makes it worse, because your involvement in this new product could be seen as rendering any infringement "willful" or at least creating that question.
You need to lawyer up, and then follow your lawyer's advice.
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