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Need Advice about an Invention / Patent
ringers19
Registered User new member
Registered User new member
Thank you in advance for your help. Hopefully someone here might have some advice. Here's my problem...
The Idea: Let's say I invented a new Baseball Glove. Nothing crazy, same materials and basic use, I just changed up the design a bit and created something that is not out on the market anywhere yet but is more functional to use. Let's assume I did a patent search and I can patent it.
The Problem: I work for a huge sports brand that manufactures and sells Baseball apparel as an Associate in one of their Retail stores. When I got the job, I signed a confidentiality agreement and there is a "Works for Hire" section which basically says anything I invent/patent/etc. while working for the company is considered theirs. Of course, they included every out imaginable.
My Question: I'm just a low low sales associate in their store. I did not use any of their ideas, products, services, materials, anything to create my design. I just happen to start working on this while I was employed here and my product idea is the type of product this company would create and sell.
WHAT CAN I DO?
Some Facts:
1. I want to start a business selling sports gear based on this one design and building from there.
2. I actually designed this thing BEFORE I started with the company but I only have a notebook to prove it (Poor Man's Copyright? ....or something like that).
3. BUT, I actually built a prototype, tested it, and registered a Provisional Patent while working with the company.
4. I did not use any of their material, designs, products, etc.
So back to my question..... what can I do? Here are my current options. Maybe someone in this forum has a better idea or advice on what I can do...
a. Do I contact the company and present the product?
b. They could say thank you and slam the door in my face and keep the idea with no compensation (Thank you confidentiality agreement!).
c. We could work out a deal for compensation and I transfer ownership.
d. They hate the idea, see it as useless, and they sign over the rights to my product and future products.
Does anyone have any advice??? I feel like once I alert them to the idea, that's it....its gone.
Thank you!
The Idea: Let's say I invented a new Baseball Glove. Nothing crazy, same materials and basic use, I just changed up the design a bit and created something that is not out on the market anywhere yet but is more functional to use. Let's assume I did a patent search and I can patent it.
The Problem: I work for a huge sports brand that manufactures and sells Baseball apparel as an Associate in one of their Retail stores. When I got the job, I signed a confidentiality agreement and there is a "Works for Hire" section which basically says anything I invent/patent/etc. while working for the company is considered theirs. Of course, they included every out imaginable.
My Question: I'm just a low low sales associate in their store. I did not use any of their ideas, products, services, materials, anything to create my design. I just happen to start working on this while I was employed here and my product idea is the type of product this company would create and sell.
WHAT CAN I DO?
Some Facts:
1. I want to start a business selling sports gear based on this one design and building from there.
2. I actually designed this thing BEFORE I started with the company but I only have a notebook to prove it (Poor Man's Copyright? ....or something like that).
3. BUT, I actually built a prototype, tested it, and registered a Provisional Patent while working with the company.
4. I did not use any of their material, designs, products, etc.
So back to my question..... what can I do? Here are my current options. Maybe someone in this forum has a better idea or advice on what I can do...
a. Do I contact the company and present the product?
b. They could say thank you and slam the door in my face and keep the idea with no compensation (Thank you confidentiality agreement!).
c. We could work out a deal for compensation and I transfer ownership.
d. They hate the idea, see it as useless, and they sign over the rights to my product and future products.
Does anyone have any advice??? I feel like once I alert them to the idea, that's it....its gone.
Thank you!
ringers19 on
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Posts
Someone who specializes in contract law (perhaps with respect to HR or employee/employer applications) may be able to offer some insight.
A patent lawyer will cost you about a thousand dollars an hour, and it's well worth it.
This also doesn't often work because its considered pretty suspicious if you leave and then the next day have this great idea...
It is, of course, better to talk to a patent lawyer.
Rigorous Scholarship
The important part, though, was that it will be well worth it to speak with a patent lawyer.
I know in songwriting, performers come out with their best stuff one year after their initial contract ends.
To answer some questions....
No, I did not create or work on any of this on company time.
Yes, the agreement does say that any idea/patent/etc that I come up with while working for company while on premises or off is theirs....and also while employed with company "and after"...should I quit.
No, nowhere in the agreement is there a time frame as to when the clause ends......IS THIS MY LOOPHOLE MAYBE???
Bottomline is.....I 've already built the prototype, tested, and sourced the materials and a manufacturer. Now I'm trying to decide if I should start selling and producing this thing and building my brand from the ground up or is this one of those situations where I'm automatically screwed.
Obviously I'm not paying a lawyer $1000/hour. Certainly that's the best option. I'm just hoping that some of your feedback makes enough sense where I feel good about starting production/sales and if the company puts 2&2 together then maybe their agreement won't hold up in court. I'll probably seek out a lawyer anyway at some point. I just don't want to start production and then get sued for everything I have!
Thanks! Love it!
As was pointed out, you're probably not going to be charged $1000/hour. Heck, there's one story up there where they're not being charged anything unless they make money with the item. Don't delay; seek out a lawyer now.
Realistically, a non-compete isn't going to stop you unless they can prove you used their resources or company time. However, if it's a company of any decent size, they can very easily delay you for years in court and bankrupt you if they want.
I work for a research lab and regularly have to document my progress in ways that you've neglected. For starters, you have:
1. A journal with some sketches.
--Is it dated? Is it notarized or countersigned? Do you have any information that can actually establish that you had this idea and worked on it before you joined the company, such as emails with pictures? Even this might not stand up in court.
2. You filed the provisional while working for the company.
--This is REALLY bad. Can you prove that working for the company didn't inspire the idea, or allow you access to research opportunities you wouldn't have otherwise had? I.e. You wanted to learn about baseball gloves, so you took this job and signed a non-compete knowing you'd get to spend all day looking at baseball gloves. It doesn't matter if this is true, but this is what the parent company will argue.
3. You claim you didn't work on this during company time.
--Can you prove this? Did you sign and date a notebook / journal with when you made your prototypes, and when you worked on them?
Sorry to be such a downer, but you're going to have a hard time. Basically the company won't deal with you until you start making money, but once you start making money you can expect a big lawsuit. Getting attorneys on your side now is really your only hope.
Additionally, how did you file a provisional without speaking to an attorney? Did you use InventHelp or some other webservice, or did you submit to the patent office yourself? A webservice likely required you to sign a contract in a way where you already owe them future profits, which makes your path even harder.
(Edits for confusing pronouns.)
3clipse: The key to any successful marriage is a good mid-game transition.
This is NOT the way the US Patent system works. Obtaining a patent is not proof that you should have a patent. A patent is only found valid once it is challenged in court. It is entirely possible that your former employer wont find out what you are doing until you have just started making money, but they can then sue you and take everything. The amount of elapsed time is irrelevant. Trying to sneak by the law is a bad idea.
A lawyer can also help you determine if your patent is likely to withstand a novelty/obviousness challenge. Again, even though you were issued a patent, Rawlings or Wilson or whoever may still have a case that your design is too similar.
edit: Honestly, everything else I said is probably irrelevant.
This:
plus this:
is probably enough that you're screwed. Things like that only work out if your invention is in a different field.
3clipse: The key to any successful marriage is a good mid-game transition.
Obviously I haven't done everything the right way from the beginning ...that's why I came here to seek some informal advice...which has been great by the way. I think this is certainly an interesting topic.
I definitely started working on this without doing the legal research. I did not even realize I signed this form until a few days ago. This was two years ago I started here. I didn't join the company realizing anything would ever happen with my idea. I had someone build it for me out. Of curiousity and wouldn't you know it.......it actually works great. Now I'm thinking of growing this, I make stupid mistakes and this is where I'm at.
I have a dated journal and documented every step of the way but no it doesn't prove anything and won't stand up in court. I did file a provisional patent through the patent office myself. I'm sure I f'd that up somewhere along the way too.
No, I did not join the company to learn about the product. I actuall thought of the design about 10 years ago but of course I never did anything about it.
It is what it is now. Ill talk to a lawyer this week. I might even just bite the bullet and present it to the company. If I lose it I lose it. I have like 10 other ideas that I can try and do the right way from the beginning.
Thanks for your help all.
Seriously, seek advise from a lawyer. It might very well be the case that the assignment in your employment agreement won't hold up.