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Invention at former employer, disclosing to others?  

 

P. Ford
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Joined: 6 years ago
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April 12, 2014 2:48 am  

While an employee at my former company (8 years ago), I synthesized a series of previously unreported compounds. I had written a disclosure while an employee there, and left the company soon afterward. I assumed they would file a patent application on them, but as far as I can tell, they never did.

Since it would appear that they probably won't ever do so if they haven't already, will I never be allowed to disclose these compounds or syntheses to anyone? As a synthetic chemist, it is quite frustrating not to be able to present ones own work, especially something that is quite core to your function (especially in a job talk).


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P.C.
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Joined: 8 years ago
Posts: 205
April 12, 2014 5:08 pm  

@P. Ford;
It is impossible for anyone else to comment knowledgably about your situation because we would have to have access to the non-disclosure contract you signed, and any other contracts limiting your speech and writing.
In all probability, the intellectual rights are completely the property of your former employer and you have no rights to any money.
You might be able to talk about the compounds, if the time limit ran out, but probably not do anything about them without a sign off from the former employer.
I am guessing the best you can do is talk to them and plead your will to get the compounds discussed, exploited etc... be advised that patenting is an expense, perhaps they do not have the will or capital to follow up. It may not be justifiable business expense or investment to bother following up on the fruits of your labor.

"I have never let my schooling interfere with my education" - Mark Twain


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RLemert
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April 12, 2014 8:48 pm  

Welcome to the "real world" of business.

The "ideal world" of academia is built around the idea of open discovery, where no one "owns" a discovery. The "real world", on the other hand, revolves around the idea of profit - of compensation for the fruits of ones labors. At first blush it may appear that this means you should be able to disclose and benefit from your syntheses as you see fit, but this interpretation would be wrong. You have already received your compensation; you prepared these compounds as a "work for hire", and you were paid for your efforts.

You are not completely without rights in this matter. You may, for example, refer to your experience synthesizing the compounds as a general class without naming the specific compounds. You may also use the techniques you developed in later works with other compounds. You would be treading on very thin ethical ice, however, if you were to use the same techniques to synthesize the same compounds for someone else without first explaining the issue to your new employer and contacting the old one.

Patents are a protection system available to inventors, but they are not required. They're expensive to obtain, for one thing, so companies may not pursue them if they don't see any potential gain from doing so. Companies may also decide to consider the inventions a 'trade secret'. Unlike patents, which expire after 17(?) years, trade secrets can 'in principle' remain secret indefinitely. Finally, a company may decide to invest their patent dollars on other inventions for which they see a greater potential return.


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Nate W.
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Posts: 359
April 12, 2014 9:11 pm  

Ford,

I need to know some answers first:

What are the terms of your non-disclosure agreement?

Do you have a non-compete as well?

Was any aspect of these compounds published?

Mostly, the period of non-disclosure is either 5 or 10 years after your last day of employment. In the meantime, what you could do on your resume is state that you worked on a broader class of compounds for which these compounds, you synthesized, are included. You could probably state in general terms the potential physiologically effects related to this class of compounds (which is probably the same as these new compounds).

If the terms of the non-disclosure has passed, you can tell anyone and even file a patent application. The USPTO doesn't check your employment status or whether you have your employer's permission to file the application. Your application might come up in a prior art search if it is published. An application will probably take several years and a provisional application will take about a year. All applications are confidential. Technology transfer / company legal departments don't constantly check the USPTO database for inventions by former employees.

Thus, check with a patent or employment attorney before you take any action on disclosing this invention whether on your resume or filling a patent application.


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Dick Woodward
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Joined: 12 months ago
Posts: 273
April 16, 2014 6:08 am  

Ford:

The previous comments are pretty much right on target.

I would advise you to be very careful here. I have seen confidentiality agreements that have no limits on disclosure of trade secrets. I suspect that anything owned by the company that is not patented would be considered a trade secret, and could be covered as such.

It is pretty clear that these compounds belong to your former employer. If you invented new synthetic routes to get to these compounds, those syntheses would also likely belong to the former employer. As I see it, there are two situations here. If you want to patent these compounds/syntheses because you think that there is economic value therein, you definitely should contact the former employer and arrange either a release or license. If you patent the compounds/ syntheses yourself, you may well find that you have patented something that still belongs to the former employer. Without the proper legal arrangement, you may spend much money with no reward.

If you wish to be able to publish or otherwise disclose the compounds/syntheses, you may be able to secure a release to allow you to do so.

I would suggest that you discuss this with an attorney before proceeding further if you feel that there is a critical reason (i.e., economic value) to obtain rights to the compounds/syntheses. If you merely want to publish the results and speak about them, you can probably ask the former employer for a release to do so while allowing them to maintain ownership.

Again, usual disclaimer - I am not an attorney, and this should not be construed as legal advice.

Dick


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Dave Jensen
Prominent Maven Moderator
Joined: 12 months ago
Posts: 910
April 16, 2019 6:37 pm  

Hello,

I bring up this older post because a friend of mine recently had this issue. Discoveries he made were not ever advanced or even patented during his work stay at a company which is now defunct. I didn't know how to advise him when he asked if he could go after something that intrigued him from those days . . . .   Anyone have thoughts on this one?

Dave

Dave Jensen, Founder and Moderator
Bio Careers Forum


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DX
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Joined: 11 months ago
Posts: 598
April 17, 2019 10:48 am  

With a defunct company - one will have issues tracking down any information.  One does not know how the archiving or data-storage was managed - if at all - it can be a full time job tracking down who, where, what .....and what could be found may be in a state that is ..well not ressurectable.    Sometimes if a project is closed and the company then many things can go through a formal "dystroy" process. There is no money and thus interest to pay storage/archieving costs.  If its intellectual knowledge, maybe on somebody's old hard drive that's collected dust in a garage.     I've had to track down vintage knowledge before, for other reasons, it can be a ardious task, filled with dead ends, re-directs,  down the paths that yield nothing, and finally you find something..that is..useless.   

 


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Dave Jensen
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Joined: 12 months ago
Posts: 910
April 17, 2019 2:10 pm  

The technology from this company eventually made its way to another company who bought it for a dime on a dollar I'm sure. It's that other company, the acquirer, who has the potential to squash my friends ideas very quickly. They're working in the same sphere.  I told my friend that he risks going to a lot of work and time only to find that they're still in possession of all the records and so on, and then they're stomp on him.

Dave

Dave Jensen, Founder and Moderator
Bio Careers Forum


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DX
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Joined: 11 months ago
Posts: 598
April 17, 2019 6:28 pm  

That’s business. Unless you mark your ground with a patent or some form of IP protection tactic - to include documentation of role etc.  c’est la vie.  No name on patent means any Idea or IP one comes up with..belongs to the company.  You want that technology then you formal request to license it out - kinda like the Actelion founders (now J&J), countless other examples.


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