Patent question

At the very least, they are likely reaching out to you because as a default rule, U.S. patent law requires each inventor to sign an oath or declaration regarding that the disclosure of the patent application is their invention, even if they only contributed to at least one claim - at least if this is a nonprovisional patent application. From their perspective, if you refuse to sign, they have other procedural options for satisfying the rules. However, from your perspective, you may be obligated to sign depending upon what agreements you had with this prior employer. As for ownership interests in the patent application, the default rule is that the patent application is owned by the inventors, jointly; however, while you were employed you very likely agreed to and/or did assign any of your default IP rights to your employer. Florida state law may also have its own laws which impact whether the employer or employees might own IP that the employee created. You will want to get consultation from a Florida licensed attorney in that regard. But I suspect that you've already assigned your rights in the patent application to your former employer, or that the circumstances of your contributions to the invention place it and patent applications stemming from it into ownership of the former employee (e.g. done on company time, with company resources, for a product/service related to what the company does, etc.).

Did you sign an employment agreement requiring you to assign inventions to your employer? if so, then you would be required to cooperate with your former employer in completing the patent application filing and assigning the invention to them. If you do not sign, there are procedures for proceeding with less than all of the inventor's signatures, and your former employer could still obtain the patent. All three inventors own equal, undivided interests in the application, and if the other two are cooperating with your former employer, then your former employer will be able to practice the invention on that basis. If an employment agreement requiring assigning inventions was previously signed, this agreement can serve as evidence of their ownership of the application, and could potentially be recorded. Since the invention was apparently made on company time, using company facilities, and in a manner that would lead the company to believe that the invention was work-related, even if there is no duty to assign the invention to them, they would still have a "shop right" which amounts to a non-exclusive, royalty-free license to practice the invention. Aside from the legal issues, was your departure on good terms? Would this employer act as a reference for you if needed? If so, then cooperating with them might be wise in order to preserve a good relationship, referral source, and/or possibility of returning to work for them. Please be aware that one of the documents you will be asked to sign is a declaration stating that you are an inventor, and the application describes your invention. This document is signed under oath, subject to the penalty of perjury, and should only be signed to the extent that you can truthfully do so.

They're contacting you because as an inventor, you have an equal undivided interest inthe application. You may have assigned it to them in an employment agreement, but they'll still try to get you to sign. If you don't cooperate they can probably proceed without you. If you have more questions, bring any employment agreements to your IP attorney.

This all depends on what was in your employment agreement. Also, many patent assignments acknowledge a duty to assist in the prosecution of all "divisionals, continuations and continuations-in-part" of the original patent application. It is highly likely that you signed such an assignment when the original patent application was filed. Show your employment agreement and a copy of the assignment to a patent attorney for analysis and advice.

Were you hired to invent or develop new products? I would expect that you signed an employment agreement that says anything you invent needs to get assigned to the company. I signed one when I worked as an engineer. As the inventor you need to sign the application to say that you invented it. Patent rights are granted to inventors in the United States, even if they are assigned to companies. I recommend NOT burning the bridge with your old employer. Most likely the employer has the rights to the intellectual property, and you will not have any, but the only way to be sure is the consult with an attorney about the specifics of your situation. Having your name on a granted patent can help your resume, but you will not likely be owed royalties or have the ability to license the patent rights to others. If you do not sign, the company is likely to still be able to file the patent, but they will be required to jump through extra hoops, costing them extra time and money. You might get them to give you a small amount of money to sign, but weight this against the risk of souring your relationship with the former employer. What is more valuable to you in the long run, a good reference from a former employer, or the small chance that you will get a "bonus" after negotiating with them. A good attorney can get the specifics from you and help you make this decision. If the company did not have their paperwork done correctly, it may be a benefit to them to get it right now and get your written agreement for a small amount of money.

You would be a joint owner of the Patent Application unless you are under an obligation to assign it to your employer. Did you have a written employment contract? If so it probably put you under an obligation to assign any inventions you come up with in the course of your employment to the Company. Most sophisticated companies would have taken care of this and you would have no right to the application. If you worked for a small start-up or something, you might have a bargaining chip here.

When I was a corporate patent attorney situations like this I hated. You call up some guy who was fired three years ago and moved on to another "life" and now you are asking for their signature. Almost as bad as when you have to call the ex employee and tell him he is going to be noticed for deposition. Yikes!

You are being contacted by your former employer because at the time your employment contract with your previous employer likely included a provision where you assigned all of your rights to any invention made during the course of your employment as a result of your work as an employee, to your employer. So, you most likely retain no rights in the invention. If you refuse to sign the paper now, it is likely that your employer will be able to sign in in your place. If you really want to make sure where you stand re your rights and responsibilities in this regard, , you will need to consult with a patent/business attorney. Good Luck.