Atlanta, GA asked in Intellectual Property and Patents (Intellectual Property) for Georgia

Q: I have a brilliant software design; how do I protect myself so my company doesn't take it and cast me aside?

My company is developing new software - I am NOT a part of the development team. But I have designed a far superior product that could potentially be worth millions to the company. If I present it to management, they could take it, hand it over to the development team, and potentially leave me out of it. I want to think they'd give me a huge raise and put me in charge of its development, but I have no guarantee that's what would happen. However, I also realize that keeping my design to myself gets me nowhere. The design is on my personal computer, spec'd with non-company software. I'm sure they could argue it's their IP, but if I were fired tomorrow, they wouldn't have access to any of it (they also don't know I've done it). I want them to have it and build it, I just want to make sure it's fate and mine are intertwined. Is there a way I can protect myself, so I can present my design without worrying about it being taken and used without me? Thank you.

2 Lawyer Answers
Tania Maria Williams
Tania Maria Williams
PREMIUM
Answered

A: I am not a patent attorney but there may be a question as to whether the company already owns it even though they may not know about it. I see that you created it on your personal computer with non-company software, but did you create it on your personal time or on company time? Also, do you have an employment agreement that discusses who owns anything you develop during your time of employment? You definitely need to consult with an attorney to see what your options may be depending on your employment agreement or even the employee handbook. Also, if they do not already own it, a good attorney will be able to guide you through the negotiation process.

Robyn T. Williams
Robyn T. Williams
PREMIUM
Answered
  • Patents Lawyer
  • Wilmington, DE

A: I agree with the above answer as the terms of the employment agreement are critical. If you are not bound by the employment agreement and required to assign all rights to your inventions made while employed to your current employer, you should (1) make sure not to disclose the invention to anyone (even family) without an agreement of confidentiality and (2) get the provisional patent application on file as soon as possible. The U.S. Patent Office operates on a first-to-file system. It is important that you preserve your priority date.

If you are required to assign your rights to your present employer you will still be a named inventor. This may prove to be highly valuable later.

Since your current employer is developing new software you should also take care to make sure that there are no trade secret issues with your invention. Although you are not privy to the current software development, a disgruntled employer may allege misappropriation of trade secrets should you opt to go elsewhere to develop your product.

Robyn T. Williams

rwilliams@devlinlawfirm.com

(929) 900-5914

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