Should I submit to a former employers demand to sign legal papers?
June 26, 2012 7:53 AM   Subscribe

My former employer is asking for my signature on a document to assign patent rights to them as co-inventor for a patent I worked on while employed by them. They are not interested in compensating me for my time.

Yes, metafilter is not my lawyer.

I worked for a large company for many years and had a number of patents filed through them while working there. A year ago they laid me off (along with a significant percentage of the company). Now I'm being contacted and asked to sign a document to transfer patent rights for a patent they are about to file. I know I don't have any rights to this patent - I worked on it while under their employment (and the primary inventor is still an employee there). While this is probably about an hour of my time (print out a document, sign it; find a willing witness to sign the document as well, travel to the company to deliver it), I don't feel any obligation to give the company even an hour of my time for free.

At the very least this will cost me at least 3 dollars (transportation, they want this done immediately).

I don't mean to be a hard-ass, but I really don't feel any obligation to help them. I replied to their request saying that they were free to contract me out if they wanted some of my time and they replied that they were unwilling to do this and then stated the timeframe they wanted this complete by.

Am I under any legal obligation to submit to this request (I know, you are not my lawyer)? I am under any ethical obligation to submit to this request? Can they file this patent removing my name from it?

This is a Canadian company, and I reside in Canada.

throwaway email address: patentlyunfair@gmail.com
posted by anonymous to Law & Government (28 answers total) 1 user marked this as a favorite
 
Be a hard ass. If they want it done, particularly if they want it done immediately, they can figure out a way to bring the paper and a witness to you, or compensate you for your time and resources. Either way it is not in your interests, professionally or personally, to do them any favors.
posted by dirtdirt at 7:58 AM on June 26, 2012 [13 favorites]


did you take any buy-out or other compensation when they laid you off ? (other than what they contractually owed you for earned leave/vacation time ? )

If so, check those documents (because odds are you signed some statement at that time to get the severance package)

If there's nothing in there, or the timeframe listed in there has expired, I think you are within your rights to tell them to pound sand, given their unwillingness to deal with you in a professional manner over this.
posted by k5.user at 8:00 AM on June 26, 2012 [4 favorites]


I think you should make reasonable accommodation to do what you contracted to do back when you were an employee, but it also sounds like they screwed up back in the day and didn't get the releases they needed when you were sitting at their desk being paid for your time.

If I'm reading this right, they seem to have a demanding attitude about it, which is irrelevant in one sense, but doesn't negate the fact that you're entitled to be compensated for your time and expense. I'd total up ALL expenses and charge at least $50 per hour for ALL the time you'll be doing this, including travel time, and then tell them once they send you a check or PayPal for that money, you'll be on your way.
posted by randomkeystrike at 8:00 AM on June 26, 2012 [3 favorites]


It's unlikely they'd ask you to sign it as a formality. Your employment agreement probably already had a provision about automatic patent assignments for work done while you were employed.

If you don't particularly care, I see no reason why you shouldn't just decline to sign it.
posted by odinsdream at 8:01 AM on June 26, 2012 [4 favorites]


On re-re-read, it sounds like the offer to do this on a paid basis has been asked and answered. I'd start ignoring them.
posted by randomkeystrike at 8:01 AM on June 26, 2012 [3 favorites]


Yes, handle it in a professional manner. Reply to them stating that your consulting fee is $x per hour with a minimum of $x. Attach a copy of a contract for that amount. I'm thinking fifty bucks to make it worth your time. Tell them how you expect the payment to be made, and then give them scheduled times and dates that would be convenient for you. And then leave it at that. Ignore any further correspondence that does not meet your requirements. Or add a little snark by simply repeating this email any time you're contacted (which would probably make me feel better). Sooner or later they'll get the message that they'll have to pay for your time to correct their error.
posted by raisingsand at 8:08 AM on June 26, 2012 [1 favorite]


If you wanted to fsck with them, you could write a letter to them (copy to the IP attorney, if you know it) stating that you recall your contributions to that invention clearly and that you're glad to see the application being filed.

At least in the US, it's very important to name inventors correctly (not adding non-inventors or omitting known inventors) so you'd be making even more clear their obligation to list you (and therefore to deal with you to get your signature).

Otherwise, I'd guess that being a hard-ass will get you ignored, or your name removed from the application.

IAAL, IANYL, TINLA.
posted by spacewrench at 8:12 AM on June 26, 2012 [2 favorites]


I replied to their request saying that they were free to contract me out if they wanted some of my time and they replied that they were unwilling to do this and then stated the timeframe they wanted this complete by.

Then leave them wanting; you can let them know your consulting fee is $X per hour, plus any expenses, and you're available whenever they need at that rate. If they're unwilling to pay for something that benefits only them, then this is not going to be done.

The old "I'm sorry, that's not possible" is an appropriate and just response at this time.
posted by Rodrigo Lamaitre at 8:12 AM on June 26, 2012 [4 favorites]


IAAL, but IANYL and TINLA.

I'd send them a letter indicating your willingness to do this for reasonable compensation as a consultant at an hourly rate of $xx. plus expenses, and stating your belief that you are not obligated to do it for free.

If in fact you're obligated to do it for free, it's on them to prove it. So maybe they will respond probably by sending you a letter that says something to the effect that, "when you signed your [employment contract / severance agreement / non-disclosure agreement / whatever it was] you agreed to perform all reasonable and necessary tasks to the completion of any and all patent applications &c. &c." and will in all likelihood include a copy of your signed contract including your signature page. They may, at that point, talk about suing you to compel you to perform on your contract.

That's the point at which you decide whether it's worth getting a labor and employment lawyer or just signing the damn thing.
posted by gauche at 8:13 AM on June 26, 2012 [1 favorite]


Yes, do check your severance agreement. Since you're dealing with their lawyers, you might want to ask them to tell you which part of your severance agreement obligates you to spend your own time and money doing something for them. The typical wording of such things is vague, beyond the actual assertion of rights, which you're not contesting. But I really wouldn't send them a contract, or be snarky about it, just make it clear that they are no longer a priority of yours. Honestly, at the very least they should come to you with the papers and a pen so that it only takes a few seconds of your time.
posted by ubiquity at 8:13 AM on June 26, 2012 [6 favorites]


Oh, man, I totally disagree with the other answers here. If there were a history of them asking for repeated inconvenient errands, then this level of hostility might make sense, but here it seems like an overreaction. I would just get the document signed and delivered and be done with it.
posted by mercredi at 8:15 AM on June 26, 2012 [12 favorites]


It's pretty obvious that some clueless person in the patent management office is trying tie up some loose ends.

I would just ignore their advances (in other words, do not reply in any way, especially in written form); I would also avoid saying anything like "please contact my lawyer", as the company has probably more resources in its legal defence fund than you do.

If they phone you up tell them you don't want them to contact you by telephone ever again, and all correspondence should be sent in writing.
posted by KokuRyu at 8:15 AM on June 26, 2012 [1 favorite]


I am not a lawyer, the following is comments that I can not substantiate with a citation. Please take these with a grain of salt.

My understanding of US patent law, which should be very similar to Canadian patent law due to the Paris Convention, is that an employer cannot remove an author from the patent because doing so would involve fraudulently filling out the patent application. If they attempt to do so anyway, and you have valid claim to the patent claims (either all of them or just some of them), in the US, you could be recognized as an author by the Patent Office regardless under Ethicon v. U.S. Surgical (This was actually sorta interesting because it dealt with a company that effectively screwed up and didn't require technician employees to assign their patents to the company).

I feel you have no ethical obligation to a company that laid you off. Period. You may have a legal obligation under a severance agreement, but you no longer have any professional obligation to them whatsoever.
posted by saeculorum at 8:16 AM on June 26, 2012 [1 favorite]


While this is probably about an hour of my time

If you spend any longer than an hour trying to figure out if you can legally stick it to them, then that route is a net loss for you.
posted by kiltedtaco at 8:19 AM on June 26, 2012 [9 favorites]


I would ignore all of this, unless I thought the people involved were ones that I would ever have to ask for a professional reference. What if you'd been on a round-the-world trip when they called, how would they have dealt with it? Let them do that.
posted by fingersandtoes at 8:26 AM on June 26, 2012 [1 favorite]


I wouldn't waste a moment on it.
posted by Segundus at 8:36 AM on June 26, 2012


The decent thing to do would be to go out of your way to sign the papers.

Sometimes, just doing the decent thing is reward enough.
posted by DWRoelands at 8:38 AM on June 26, 2012


Tell them you'll be at home on [this date] between [this time] and [an hour later] if they want to send someone over with the documents to sign. Feel free to leave the house 10 minutes after that time frame.
posted by ThatCanadianGirl at 8:47 AM on June 26, 2012 [4 favorites]


Having another patent for your CV should have some value to you. I vote sign it. Seems a reasonable compromise is to ask them to have everything ready and leave it with the receptionist so you can just go in and sign when convenient for you.
posted by cosmac at 9:32 AM on June 26, 2012 [2 favorites]


"The decent thing to do would be to go out of your way to sign the papers."

Being decent does not simply mean doing whatever the other party wants. It means doing what is reasonable given the circumstances. Often this does mean things like doing a small favor or letting go of something without compensation, but not always. Being decent does not require you to sacrifice your rights or compensation.

In this case, if you feel that the company's expectations are unreasonable, then feel free to bargain for better treatment. (In this case, barring a standing contractual obligation, I think it's them who need to accommodate you.) But, better treatment can mean a lot of things. It can mean monetary compensation, but also just having them come to you or having them grant some other benefit to you. Don't limit yourself by thinking that compensation equals dollars.
posted by oddman at 9:36 AM on June 26, 2012 [3 favorites]


(print out a document, sign it; find a willing witness to sign the document as well, travel to the company to deliver it)

So get them to print out the document and bring it to you. Whoever brings it acts as witness then takes it back to them. Then all you have to do is sign and that only takes three minutes tops.

I think you should sign it and don't see why they should pay you to do that, but it seems entirely reasonable that they do the running around given they want it now.
posted by shelleycat at 9:58 AM on June 26, 2012 [3 favorites]


As has been mentioned above, the burden is on them to get the proper signatures in order to file the patent application. While most employment contracts are work-for-hire (meaning the employer owns the work you do for them and you probably did sign away the rights), they've still got to do the paperwork right.

Write back and say you'll be happy to sign the documents if they send somebody to you to witness them. They're paying legal fees either way. Present them with a least-nonsense way to get this done and they'll send a clerk out to you (probably at a time and place of your choosing within business hours). It'll take you five minutes, which you can then donate because it's the decent thing to do.

And on preview, shelleycat said the same thing.
posted by fedward at 10:01 AM on June 26, 2012


//If you spend any longer than an hour trying to figure out if you can legally stick it to them, then that route is a net loss for you.//

That assumes that the OP doesn't gain some benefit from sticking it to his former employer. If it puts a smile on his face, who are we to say how much that is worth?

That said, if mortgage companies can send a notary to your house to sign for a refinance, your ex-employer can send a notary to your house to sign off on this.
posted by COD at 10:07 AM on June 26, 2012


Do you know the primary inventor? Can you simply ask them to find a way to compensate you for your time?

As described above taking you off the patent has significant legal consequences with respect to the legitimacy of the patent.
posted by NoDef at 10:28 AM on June 26, 2012


as much as you may feel 50$ may get you somewhere more in life, or make you feel like you got something out of this deal it won't. In fact it's doing more harm than good because it perpetuates the need for interactions with lawyers and complicates a situation that doesn't need to be complicated.

They are the primary, you are the secondary, and that is that. Tell them that they can come to you and though they are not required to give you anything you would appreciate a payment for your time (20$?). It takes a lot of energy to be angry/mean, so just be nice about it and tell them to come to you and you'd be happy to sign it.
posted by zombieApoc at 10:35 AM on June 26, 2012


Also your initial response that they should contract you for your time was a mistake. By being aggressive you didn't gain any high ground and you lost a bit of footing you need to get them to come to you (which they probably would have been willing to do since they're presumably paying counsel already). It was, to use a term of art, a dick move.

Are you employed now? Tell them you're unable to take time away from your current job to travel to their location and get them to come to your office. Let your employers know somebody's going to come to witness a signature on a document needed for a patent application, and your current employers will see you're easy to work with and that you collaborated on a project that warranted a patent application.

If you're self-employed, tell them you're willing to sign but you can't afford the loss of billable time. You'll be willing to meet with them at your home office, a friendly client location, a convenient coffee shop, or whatever, in between your current contract work.

Unless your original contract of employment granted you some sort of patent rights (which is unusual) it's not worth fighting about, even if you left on bad terms (which, apparently, you did).
posted by fedward at 10:56 AM on June 26, 2012


Fuck 'em. Tell them you already told them your terms. Any legalisms will be mooted by actually signing, so you'll always have an out. Also, starting thinking in expert terms: $500/hr.
posted by rhizome at 11:08 AM on June 26, 2012 [1 favorite]


From the OP:
Thanks hivemind!

I mailed my former employer and told them I was willing to sign the papers if they would meet me after work hours (so as to not interfere with my current work obligations) in a public place (a pub) to minimize the impact on my time.

They thanked me for being willing to help out, so it seems quite cordial (although stubborn in my previous correspondence with them, I kept a friendly tone throughout the interaction).
posted by jessamyn at 11:54 AM on June 26, 2012 [4 favorites]


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