Legal Question in Intellectual Property in Wisconsin

Help: Patent Release Form?

In the past, I was an independent computer contractor and performed some coding for a company which is now putting a patent on the code. Everyone that worked on the project is going to be named on the patent including myself. However, the company wants everyone to sign a release form that takes away any rights that we have for this patent.

Question: Do I have any rights to begin with? As a contractor, all the code that I wrote became their property. As such, are they simply putting my name on the patent as a nice gesture or is this something required by law? And if I do have any rights and refuse to sign the

release, can they take my name off the patent and include everyone elses?

Thanks in advance


Asked on 1/31/03, 11:37 am

2 Answers from Attorneys
Lawrence Graves Coolidge & Graves PLLC

Re: Help: Patent Release Form?

Actually, it is employees whose work product automatically belongs to the employer (if the work is within the employee's scope of employment). Contractors retain all intellectual property rights in their work unless transferred by contract to the "employer" company.

Being listed as an inventor on a patent is not something over which the company has discretion -- they have to list you if your contribution was a material element of the software.

Best wishes,

LDWG

Read more
Answered on 1/31/03, 12:16 pm
Bruce Burdick Burdick Law Firm

Re: Help: Patent Release Form?

Ditto on Mr. Graves's response.

Also, you are an author for copyright purposes and own the copyright to your part of the program if there is no written contract to the contrary. Unless the company has an invention agreement with you (and they are generally called something other than "Invention Agreement", they not only must name you, but must get your signature on the declaration or oath of inventorship. If they omit you as a named inventor, they have opened a major loophole in their patent, as US Surgical and Ethicon can attest.

I think you should get an attorney involved on your behalf so you do not get ripped off by the company.

Read more
Answered on 1/31/03, 10:30 pm


Related Questions & Answers

More Intellectual Property questions and answers in Wisconsin