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The company hired employee as contractor to give the patent right of my prior invents in any manner

San Jose, CA |

During Interview, the company knew me having the prior inventions of electrochromic driver, the company wanted to get my prior inventions. The company changed my position from employee to contractor; asked me to sign contract agreement. In contract agreement, the company asked me to give patent right of my inventions to them "In Any Manner". However, the company's contract agreement didn't have the place to put "prior inventions" to declare my "prior inventions" before working there. Later, the company told me to change my position from contractor to employee with "fake employee offer". I was afraid the company was going to taking away my "prior inventions" in "exhibit of employee agreement". I filed patent application. Employee's offer is fake. Now, the company asked the patent right of my prior invention

Attorney Answers 4


  1. I see no question.

    It is not only imprudent, but also a violation of the Community Guidelines to put such specificity into your post. Please be sure to leave that out in the future.

    This answer should not be construed to create any attorney-client relationship. Such a relationship can be formed only through the mutual execution of an attorney-client agreement. The answer given is based on the extremely limited facts provided and the proper course of action might change significantly with the introduction of other facts. All who read this answer should not rely on the answer to govern their conduct. Please seek the advice of competent counsel after disclosing all facts to that attorney. This answer is intended for California residents only. The answering party is only licensed to practice in the State of California.


  2. First, there is no question.
    Second, here is an answer - by not having a lawyer review your contract you ended up in a mess. If you don'thire a lawyer now, it will get much, much worse.
    You are "allowed" to try it yourself. It almost certainly won't work to your benefit.

    The above is general legal and business analysis. It is not "legal advice" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.


  3. I think your question is whether the company is the owner of (1) "your" electrochromic driver inventions and (2) the patent application for those inventions.

    No one but your own intellectual property attorney can tell you because the analysis requires a review of all the documents that you mention, and others that you don't, and ALL of the facts -- not just the [heavily] slanted facts that you have provided. If you believe that the licensing or sale rights to the inventions that you've created are valuable then there is no getting around having to hire your own intellectual property attorney to help you.

    If you did not raise these issues with the patent attorney who filed your patent application then there is some question in my mind whether the application [or, more specifically, your declarations in that application] may not be entirely true and accurate. Such as if you included in your application elements of the invention that were developed [by you or others] while you worked for the company with which you have this dispute [who is, I take it, your current employer]. If so, the inaccuracies put the application, and any patent that issues from it, in jeopardy of being held void.

    If you did not have a patent attorney draft and file your patent application then it is most likely worthless [as are 99% of applications that are filed by non-patent attorneys --- and even inexperienced patent attorneys].

    In short, no one via this Q&A forum can provide you with actionable information in this situation. You must visit with your own intellectual property attorney. Good luck.

    P.S. --- When you do tell your story to your own intellectual property attorney you REALLY need to disclose ALL the facts and you need to do so without slanting any of them. Your question is far too biased for any attorney to take you seriously.

    The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.


  4. Hire a patent attorney; tell him what you want to do and ask him how he can help you achieve your goals. (and what the risks are)

    Please remember to designate your question's BEST ANSWER.

    Please remember to designate your question's BEST ANSWER.

    Curt Harrington
    Certified Tax Specialist -- State Bar of California Board of Legal Specialization
    Electrical-Chemical-Mechanical Patent (Intellectual Property) Attorney
    (562) 594-9784
    http://patentax.com
    About Curt: http://patentax.com/curt/index.html
    Visit the Library: http://patentax.com/library/

    Curt Harrington Patent & Tax Law Attorney Certified Tax Specialist by the California Board of Legal Specialization PATENTAX.COM This communication is general information and not legal advice, and does not create an attorney-client relationship. This communication should not be relied upon as any type of legal advice. Please note that no attorney-client relationship exists between the sender and the recipient of this message in the absence of either (1) a signed fee contract and (2) remission of an agreed-upon retainer. Absent such an agreement and retainer, I am not engaged by you as an attorney, nor is any other member of my law firm.

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