Ask HN: Reward for Patents After Leaving the Company?

12 points by wsr 8 years ago | 12 comments

Hi HN -

I have a patent/employment related question that I'd love to get some advice on.

I worked for a well-known tech company. During my tenure, I filed for many patents on the company's behalf. IIRC, the company gives you ~$1k for filing a patent, and additional ~$10k once the patent is approved. I unfortunately no longer have access to the official patent policy.

I received the initial reward of $1k for each of my patent filings. However, I left before the patent was granted. I only realized today that these patents have all been approved by USPTO as of earlier this year.

My questions are:

1. Should I still be entitled for the final reward from the company?

2. If so, I'd love to hear HN community's advice on how I should approach the company to seek the reward.

I feel like I am not alone in this because patents takes a long time to approve and people move around in our industry. So I hope the answers to these questions can help others too.

Many thanks in advance!

patio11 8 years ago |

Entitled is a funny word with two senses here. One is "Do I have a claim for compensation which the legal system will back?" and another is "Do I deserve do get paid this money?"

Legal questions are often best answered by a lawyer. The lawyer is going to ask to see the contract you have with your employer about this compensation. I do not have access to this contract, but I have a probabalistic guess for you based on standard practices in the tech industry: you do not, in fact, have a contractual right to payment for the company's patents. They're the company's patents, not your patents -- you signed an IP assignment agreement which made this absolutely, unambiguously clear roughly contemporaneously with starting your job. Your sole guaranteed compensation for any work was your salary. Your company owes you zero dollars and zero cents of remaining salary; they mathed the heck out of that when you stopped working for them and, after that check was cut, you were even. Your company has discretion in awarding your bonuses when you worked there; they're going to exercise their discretion in not awarding you bonuses since you do not work there.

Do you deserve to get paid the money? That's a rather different kettle of fish. To the extent that you're well-educated adult who can understand contracts presented to you in English, none of the above should come as a surprise. To the extent that one thinks that the purpose of the bonus is not incenting future behavior but rather rewarding past behavior, a reasonable argument could be made that since you put in the work you should receive the fruits of it.

wsr 8 years ago | |

Thanks for the long reply patio11.

I can see where you are coming from, and I wouldn't be surprised if the same argument is used by the company. If that is the case. O well, I wish them well but I would never be this naive again.

There is just one point that you might have missed.

The patent work doesn't stop the moment you finish filing. In fact, almost all valuable patents will be challenged in court, which can cost a LOT of money. In those cases, the company would have to hire back the original inventors to defend them in court, for which the original inventors can charge almost an arbitrary amount of money for.

In my personal opinion, it would not be wise for the company to argue over pocket change amount of money if it risks destroying the relationship between the company and the inventor. If that is really the case, when the day comes that the company needs help, the inventor would not hesitate to charge exorbitant fee just to spite the company. I honestly believe this is why @smoyer in the other comment is still getting paid by his company even though he is no longer employed.

Last but not least, on a human level, I feel it is a bit unfair given how much extra I worked for these patents, above and beyond my call of duty. I'm not going to cry over it but it will leave me in a pretty bad mood. If I end up getting screwed over, well... let my experience serve as a lesson for rest of the aspiring inventors in similar situation in the future.

lucozade 8 years ago | | |

> the company would have to hire back the original inventors to defend them in court

What makes you say that? I'm genuinely curious. I'm the named inventor on a few of patents for a previous employer that were all granted after I left. It never occurred to me that they would continue to need my services (nor have they).

BTW have you asked your previous employer about the situation? My guess is that @smoyer's situation is fairly rare and the company will likely consider it a perk rather than an entitlement. It's not clear there would be any harm in asking though.

madcaptenor 8 years ago |

That's up to your company's policy. My company has a similar policy with a two-stage award, and you're not entitled to the award for approval if it's approved after you leave.

Do you have any former colleagues/friends at the company who could get you a copy of the policy?

wsr 8 years ago | |

Good point! I'll check to see if any of my friends can get me a copy of the patent policy.

I wonder how legal it is in the state of California to bar the people from getting their reward simply because they are no longer with the company. Patent approval has nothing to do with the employment status. This seems a bit unfair to be honest.

Further, they specifically asked me for help AFTER I left the company. I agreed to help as a good-will gesture. I wish I could've clarified the reward policy back then.

madcaptenor 8 years ago | | |

Out of curiosity, I checked our policy. The people who can get monetary awards at my company are:

- active employees, and

- retired employees who retire with eligibility for retiree health benefits (my understanding is that this is, approximately, people who worked for the company for 20 years or more), if they provide requested assistance to the company to get the patent issued after their retirement.

So at my company, if you just left without having been here for a long time, they wouldn't give you the money after you left. (This is what I thought, and good to know in my case since I have a few patents in the pipeline myself...)

Furthermore, there is no mention that "this is different in California". We employ people all over the country including in California, and a lot of our policies do call out California specifically because it does have different laws, so I suspect there's nothing special about California here. (I am not a lawyer.)

smoyer 8 years ago |

I also wrote a lot of abstracts for a large cable television equipment manufacturer. In some cases, Ididn't even write the application but they've continued to pay me both the filing award and patent award fees. I haven't worked there since 2010 but they're still paying me as an employee.

wsr 8 years ago | |

Interesting! At least there is one case that the company is doing the right thing. Thanks for sharing smoyer!

nickm12 8 years ago |

1. No, you are not entitled to the final reward (almost certainly).

Maybe your employment contract is different than other companies I have heard of, but this ought to be just like any other bonus (referral bonus, holiday bonus, etc.). When you terminate your employment, you are no longer eligible for employee bonuses.

chrisbennet 8 years ago |

The company most likely was banking on most employees never collecting the patent granting "reward". Like equity, it's a carrot to motivate/manipulate you, not a sincere "thank you".