Legal Question in Intellectual Property in California

Ownership of idea

Hi -

I would like to file for a patent for an idea I came up with 2 years ago. Right after I wrote up the initial design (and I have that paperwork, although it's not dated), I joined another software company and - coincidentally - they needed software written which I chose to implement based on this same design I had.

To emphasize, the lead designer on this part of the software was myself - I was given creative control.

Now that I've left the company, I would still like to patent my original idea. Although I implemented the software I described above for this other company (which contained a design that was 80-90% similar to the original idea I had), I am concerned about the fact that I will not be awarded the patent because the company will claim that I actually developed my idea while working for them.

As described above, though, the real truth of the matter is that I came up with the idea before joining the company and only happened to implement something which was very similar while working for this other company.

Who owns the idea? Them or me?

Thanks very much.


Asked on 4/22/98, 6:53 pm

1 Answer from Attorneys
Steven Levy Law Office of Steven R. Levy

Ownership of Idea/Intellectual Property

SEE A LAWYER. You may own all, part, or none of the "final embodiment" of your "idea." The outcome would depend upon the status of development before you began employment, agreement(s) between you and the employer, when where and how the "idea" was improved upon after you began employment, and whether certain Labor Code provisons were/are applicable and, if so, whether your employer made certain legally required disclosures. As to obtaining a patent, they are very expensive and time consuming when done properly. You cannot patent a "pure idea," but there is a way to obtain some more limited protection for an "idea" that has yet to take on an actual "embodiment. You need to talk to an attorney familiar with intellectual property. THIS INFORMATION IS BASED ON GENERAL PRINCIPLES OF LAW AND IS PROVIDED AS A COURTESY ONLY. THIS IS NOT INTENDED TO, AND DOES NOT CREATE AN ATTORNEY-CLIENT OR OTHER ONGOING RELATIONSHIP. YOU SHOULD SEEK THE ADVICE OF AN EXPERIENCED ATTORNEY AS SOON AS YOU HAVE ANY LEGAL QUESTION. DELAY, FAILURE TO ACT, OR IMPROPER ACTS CAN RESULT IN A COMPLETE LOSS OF LEGAL RIGHTS.

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Answered on 5/12/98, 11:12 am


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