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Divisional application and declaration post employment and assignment

Oxnard, CA |

While with a former employer, I filed for a design patent and subsequently assigned it to the company. Since leaving the company involuntarily, several revisions to the original application are now required. Am I under any obligation to sign this declaration as the inventor of record at this point? Does the company have recourse if I don't sign? Should I negotiate a settlement with them as the product design has generated significant past sales revenue and has a strong future for the same?

Attorney Answers 4


  1. Best answer

    I agree with Mr. Nuttall. You may have to sign documents, but you most likely do not need to do any additional work for the company that let you go. Read your employment contract, any departure contract and the assignment contract to determine your obligation to the company.

    Also, if you can keep the relationship positive, you may be able to negotiate some fair agreement giving you something in turn for your assistance. Depending on the value of your new contributions, this could be royalties on future sales or simply a one time payment for hours worked. Where you fall between depends on their ability to find someone else with your particular skills.

    If more on the high value end, I suggest you have an attorney (licensed in your state to review the contracts/assignment and assist you in negotiating and drafting an agreement for new contributions you would provide.

    Good luck.

    My disclaimer is simply that Avvo already has an adequate disclaimer.


  2. The answer depends mostly on contracts. First, the document you signed when you assigned the design patent application to the company may have included a promise (on your part) to cooperate and sign documents in continuing prosecution of the patent application (at least it would have if I had prepared it for your company). Also, if you signed an employment contract upon joining your former employer, it likely had a clause or two obligating you to cooperation. Of course you can try to negotiate some payment for cooperating and signing documents which you may already be obligated by contract to sign, but if there's bad blood don't be surprised if they throw a contract (and a lawyer) at you. Best bet - before you do anything, find the contracts that you have signed.

    (949) 721-6380 - Of course there's more to it! Plus, we don't have an attorney-client relationship. This brief comment is for information only, and must not be relied upon as legal advice.


  3. I agree with the other attorneys. It will depend on your employmet agreement and other company contracts. I suspect that you will be obligated to sign it. Most companies that have patents will have policies covering this situation.


  4. This is a common problem. Ordinarily, your employer owns any patents rights that arise from an employee's work for the employer. Further, the terms of your employment agreement may require you to cooperate with the employer in connection with the patent application even after you leave. On the other hand, if your former employer asks you to file a false or incorrect declaration, or to otherwise engage in improper conduct, you may have the right to refuse to do so. If you refuse to reasonably cooperate, you can expect that your former employer will retain counsel to attempt to force you to do so. Unless there is a good reason for you to refrain from cooperating, you probably should do so. Sometimes I have succeeded in getting employers to pay amounts to persons in your situation to cover time and expenses devoted to the patent application---most companies are willing to pay you something for your efforts. Your best bet is to retain legal counsel to handle this for you.