Patents and copyright

[harpo_72]

Has anyone got any experience in this area?
My company has a scheme but it kind of feels that it is not so beneficial for the inventor. They said they may pay extra if it was applied elsewhere or on a significant volume, but are not open to discussing any further or making a commitment without access to the idea.

My idea may impact security problems for vehicles and could be introduced on multiple car lines from different brands.

But being someone who really wants to live a life of no financial stress, I wanted to be paid for its usage much like a royalty… yes I want to be that guy who never works again. Is it possible?

 

[Bdill93]

Has anyone got any experience in this area?
My company has a scheme but it kind of feels that it is not so beneficial for the inventor. They said they may pay extra if it was applied elsewhere or on a significant volume, but are not open to discussing any further or making a commitment without access to the idea.

My idea may impact security problems for vehicles and could be introduced on multiple car lines from different brands.

But being someone who really wants to live a life of no financial stress, I wanted to be paid for its usage much like a royalty… yes I want to be that guy who never works again. Is it possible?

Depending on what the idea is... You'd need to design whatever your idea is to the level of a patent application.

If you truly believe this is your pathway to early retirement I would explore personally inventing and patenting it then selling it off.

Lots of legal areas you'd also want to cover to ensure you're not risking your current work contract too.

 

[WGCRider]

Depending on what the idea is... You'd need to design whatever your idea is to the level of a patent application.

If you truly believe this is your pathway to early retirement I would explore personally inventing and patenting it then selling it off.

Lots of legal areas you'd also want to cover to ensure you're not risking your current work contract too.

You may also want to consider quitting your job before you do any of this as well. If any of this is developed while you are employed by a company in the same/similar field. The company owns the IP not you - they've paid you a salary for that.

 

[harpo_72]

To be honest I wasn’t thinking I was at risk work wise as this is not my area of expertise. If I were to use their resources I would expect some risks, so I have not pulled any in.
I have asked a design engineer friend if he can help me as we generally have chats about suspension links and anti roll bar stuff

 

[VVega]

A few points (from my experience) that might be useful.

- do a patent search in this area to see what the prior art is (most likely there will be a lot even if you don’t see it realised on the market). Google patents or https://worldwide.espacenet.com/

- read the info on UKPTO: https://www.gov.uk/patent-your-invention

- go and talk to patent lawyers (pick a couple of firms) - the initial meeting is typically free and is a good exercise to see if you can explain your idea to someone else. The lawyers should also give an indication how patentable the idea is.

- if you like to discuss the idea with anyone, just sign an NDA (plenty of templates on the web) and *in principle* you are protected

- inventing sth and licensing it / selling a patent is extremely challenging (recommended reading: James Dyson - Invention…)

- inventing sth and building a product and bringing it to the market is also challenging but you have more control over it

- car industry is very slow and challenging

PM if you like any more specifics

 

[bobmac]

Patent lawyers/writers are very expensive.

 

[GreiginFife]

Patent lawyers/writers are very expensive.

Very, but if the idea is a viable one (i.e. firstly it meets the patent criteria and then is either commercially viable and/or licensable) then the cost can be a good investment to protect the inventor.

I worked with an IP client a few years back and what struck me was how frequent and how easy "patent jacking" is and how little the patent holder can do if they don't have the necessary protections in place.

But the CEO didn't drive a spanking new DB11 charging reasonable fees

 

[harpo_72]

I just had confirmation, irrespective of my field of expertise I would be sued by the company if I brought out a patent as they deem it to be their property.
If I chose to release through them they would make 3 separate payments with a limit of £4000 total. They would then freely deploy/sell the idea for their own profit with no obligation to pay any royalties or credit… all I would have is bragging rights ( and they don’t pay mortgages!)
They also have asked if I own any current patents as if that is the case they apparently have the right to investigate and claim those.

So for me the idea is shelved, I won’t bother with it.

 

[VVega]

I just had confirmation, irrespective of my field of expertise I would be sued by the company if I brought out a patent as they deem it to be their property.
If I chose to release through them they would make 3 separate payments with a limit of £4000 total. They would then freely deploy/sell the idea for their own profit with no obligation to pay any royalties or credit… all I would have is bragging rights ( and they don’t pay mortgages!)
They also have asked if I own any current patents as if that is the case they apparently have the right to investigate and claim those.

So for me the idea is shelved, I won’t bother with it.

Sorry to hear this.

As a note, you should get some HR advice on this, your work contract normally will set out the rights to the IP generated through the course of your normal duties.

This should not preclude you from inventing and commercialising sth in your own time. The company might be in the wrong even by implying anything else and you would have a reasonably straight forward tribunal case against them.

Having said that obviously all this is balanced against all the overhead of having a conflict with your employer.

 

[VVega]

Patent lawyers/writers are very expensive.

Not as much as the actual patent maintenance fees Just keeping the patent alive can be very expensive depending on the number of territories etc.

 

[harpo_72]

Sorry to hear this.

As a note, you should get some HR advice on this, your work contract normally will set out the rights to the IP generated through the course of your normal duties.

This should not preclude you from inventing and commercialising sth in your own time. The company might be in the wrong even by implying anything else and you would have a reasonably straight forward tribunal case against them.

Having said that obviously all this is balanced against all the overhead of having a conflict with your employer.

I am a contractor/consult so I am wondering whether I do it through my own personal company or set up a separate one to basically hide behind. But I think directors are listed so that might not work.
I have a few other avenues to explore, but my wife’s view was take the £4000 and screw your pride…

 

[GreiginFife]

I am a contractor/consult so I am wondering whether I do it through my own personal company or set up a separate one to basically hide behind. But I think directors are listed so that might not work.
I have a few other avenues to explore, but my wife’s view was take the £4000 and screw your pride…

If you are providing day rate services through a limited company, unless its written in to your contract with the client specifically then you own any IP that you create.

I had an issue with a client that I provided a training course to, they tried to claim IP over the materials as I’d written them specifically for their employees. But it wasn’t specified in my statement of work or in the terms of my contract with them that they would own any IP.

 

[harpo_72]

If you are providing day rate services through a limited company, unless its written in to your contract with the client specifically then you own any IP that you create.

I had an issue with a client that I provided a training course to, they tried to claim IP over the materials as I’d written them specifically for their employees. But it wasn’t specified in my statement of work or in the terms of my contract with them that they would own any IP.

That’s an interesting wrinkle, I know my contract is different compared to other contractors because they are what is termed a work package or employed permanently by a contract service provider

 

[GreiginFife]

That’s an interesting wrinkle, I know my contract is different compared to other contractors because they are what is termed a work package or employed permanently by a contract service provider

I think it comes down to whether you are considered and "off-payroll" worker. If you consult on behalf of an actual consultancy (like a KPMG or similar) then it's whatever is written in to the service provider's contract, not yours.

If, like me, you are directly contracted to the client as a professional services company provider of day-rate services then it's dependent on what is in your terms of service contract or statement of work.

I have only had one instance where a client has had an implied IP ownership clause in my contract, which I signed regardless as I wasn't providing or creating any IP.

 

[harpo_72]

I think it comes down to whether you are considered and "off-payroll" worker. If you consult on behalf of an actual consultancy (like a KPMG or similar) then it's whatever is written in to the service provider's contract, not yours.

If, like me, you are directly contracted to the client as a professional services company provider of day-rate services then it's dependent on what is in your terms of service contract or statement of work.

I have only had one instance where a client has had an implied IP ownership clause in my contract, which I signed regardless as I wasn't providing or creating any IP.

Just reading through it, my agency is my Ltd company client. I am an employee of the Ltd company. The OEM is my agency’s customer.
It is all a bit complex, but their are lines in there like “must” divulge ideas etc ..

 

[VVega]

I am a contractor/consult so I am wondering whether I do it through my own personal company or set up a separate one to basically hide behind. But I think directors are listed so that might not work.
I have a few other avenues to explore, but my wife’s view was take the £4000 and screw your pride…

In this case, just review what the contract says (I understand that you have one with the agency not directly with the company).

Basically, it should have an IP clause that will state sth like:

All records, documents, papers (including copies and summaries thereof), works and any other intellectual property related rights made by a Consultant directly and solely in the performance of the Services ("Works") shall, together with all the worldwide right title and interest in all the Works, be and at all times remain the absolute property of the Company.

Now, as you can see the key point still the same: did you invent it in due course of performing your services for them or outside...

As a reference, a typical employee incentive for coming up with a patent is much less than 4K...

 

[harpo_72]

In this case, just review what the contract says (I understand that you have one with the agency not directly with the company).

Basically, it should have an IP clause that will state sth like:


Now, as you can see the key point still the same: did you invent it in due course of performing your services for them or outside...

As a reference, a typical employee incentive for coming up with a patent is much less than 4K...

Yes there is a similar paragraph but it goes a bit further.
Did I do it on their time.. no on my own. Is it related to an issue they have, no they don’t have the issue yet but lots of OEMs do and the solutions are not robust, because they are after thoughts.

 

[VVega]

First read your reply as you did it on their time, which on the second read is the opposite of what you are saying.

So if you did it outside your contracted duties, a possible angle they may have is to claim that you used access to their “trade secrets” and “know how” to come up with the invention as it is in the same/adjacent application area.

In any case, if I were you I’d do patent searches and talk to patent lawyers to understand how strong the potential patent can be - that would help to decide how much it’s worth fighting for

 

[GreiginFife]

First read your reply as you did it on their time, which on the second read is the opposite of what you are saying.

So if you did it outside your contracted duties, a possible angle they may have is to claim that you used access to their “trade secrets” and “know how” to come up with the invention as it is in the same/adjacent application area.

In any case, if I were you I’d do patent searches and talk to patent lawyers to understand how strong the potential patent can be - that would help to decide how much it’s worth fighting for

This is the best advice TBH. Clearing the first hurdle is "does it achieve the threshold to be classified as patentable" before you even go on to things like where it should be patented (as VVega points out, patents are filed by territory in the main and some jurisdictions can be expensive to maintain over the course of 25 years).

They are able to offer the best advice for protection against jacking as well.

 

[harpo_72]

I will do some more investigating this weekend. I have not turned anything up so far and various searches using different terms. Hopefully it is new and then I will have a chat with a patent company.