Re: Proposed Update to Note Well

[Jorge Contreras <[e-mail]>]

On Fri, Jun 22, 2012 at 4:49 PM, Robin Uyeshiro <[e-mail]>wrote:

> **
>  "Ownership" is not a term used.  "Control" can
> be problematic, if the inventor changes employment.  If you invent
> something
> for which a patent is issued and assigned to your company, then you change
> employment, then neither you nor the company you currently work for
> "control" that patent.
>
>
> This is just not correct.  If the patent is assigned to the company, and
> the inventor leaves the company, the company still owns and controls the
> patent.
>
>  [RU]  Your new (current) company does not "own" the patent and neither
> do you, if you have signed away your rights, which you are required to do
> for most companies in the US.  But you should still disclose the patent.
>
> Ah, I see your point now.  You are right about ownership, but this would
become a "third party disclosure".  It's not required, but is recommended
under BCP 79.  It's the same as if you knew about a patent held by another,
unrelated company.  Once you leave the first employer, you don't know what
the fate of the patent is (e.g., it could be sold, abandoned, etc.) so you
aren't required to disclose it (just encouraged to).