Being an I.P. Punk - balancing the intellectual property relationship

The inventions agreement with engineers creates a completely unbalanced relationship where the employer leverages their control over the baser layers from Maslow's hierarchy of needs (food, shelter, employment) to get a stranglehold over a person's intellectual and creative output. For more on this topic see The Toxic Employee Inventions Agreement.

This can change, however, and it involves what you do before you hire onto a company – being an IP Punk. This article is more of a thought experiment than a suggestion that people actually do this, but it does raise some compelling thoughts.

The reality is coming up with an idea is easy. Before hiring on to a company, you should first investigate what that company does, what they are working on, how they are trying to innovate and be unique, etc. This is all public information and is part of the process you should just do anyway.

After doing this, consider what challenges they may be facing in the market, and start to think of creative things that could help them out. Wild, out of box ideas, or even things they might already have started to investigate. The key is to take this a few steps further, think to the future, connect dots on things that haven't been obvious yet. Remember the criteria for a patent:

  • Provides a utility (aka service)
  • Novel
  • Non-obvious

Come up with several ideas in the industry the potential employer works in, and draft up a "back of the napkin" document describing how these could be built and executed. Then, before you visit or talk with anybody at the company, file this as a Provisional patent (nominal fee).

Conduct your interview process as normal, and do not mention this filing (this is why you are a punk, but it helps when the time comes to negotiating).

If things go well and you are given an offer, you then turn in your resignation wherever you are working, and you show up at your new employer ready to tackle the world. But first, there is HR and their paperwork, which includes an inventions agreement where they own everything you do or think, in vague terms that gives them all the leeway and puts you into a corner, along with you granting them fairly unlimited powers of attorney over your intellectual property.

Now is when you take a minute and pause. I am not an attorney and I am not advising any course of action. I'm just suggesting a possibility, and you are on your own for how to act. I suggest keeping things amenable, helpful, and cordial in all cases if you make this confrontational it will not turn out well for you.

When signing that agreement, you could bring your IP punk out. In that agreement, they should at least let you exclude prior IP, and that is where you put down your ideas that are patent pending as IP that has been excluded.

This should open some dialog because it should have a strong overlap with what the company already does, and that opens the table for negotiating the relationship with strength. You can offer to have it be a partnership to further develop the IP, where they are at a lesser position on owning it, but hey, you came up with the idea first.

If you navigate this carefully, it should help turn the tables on that relationship, and establish you as an independent thinker and IP owner who can bring extra value to the company, and not just one of the sheeple developers they hammered an unfair inventions agreement upon.

What do you think?

How patent filing works

Okay, that's a big topic, so let me just give a high level summary. You can file a Utility or Design patent (but the latter don't really apply to tech). These average over a year's time to complete, and take some cash. But you can also file a provisional patent. These are often skipped because they don't really do much other than hold your place in line, as it were, on a timeline. So if you want to place a stake on the timeline for when you first had the idea, you can draft a "back of napkin" type document and get it filed as a provisional. The cost of this is fairly nominal.

But it isn't a real patent yet. You have a year to get your first submission of a utility patent filed against the provisional as a claim. If you do this, the "first date" filed on the patent begins when the provisional was filed.

If you do not, then the provisional expires and it doesn't mean much else. You cannot extend provisionals either - you need to file a utility patent against it and begin the process there, or the provisional is effectively null and void.

Looking for help with IP law?

If you need help learning more about how to file a full utility patent, I recommend reaching out to David Groesbeck at Groesbeck IP Law.

Brandon Gillespie

Brandon Gillespie

Brandon loves Tech and has a breadth of experience including hands-on Implementation and Leadership Roles across many companies including small startups, enterprises, and the USAF.

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