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Alex Reese
Alex Reese, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 3424
Experience:  Experienced in intellectual property law
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Short background: I am an Electrical Engineer working

Customer Question

Hello,
Short background:
I am an Electrical Engineer working for a company in San Jose California. I have invented a device and patented it under my name and company name while I was working in the same company during 2014.
Company is asking me to sign the declaration of 37 CFR 1.63 which will transfer all right to the person ( assignee who is the owner of the company)?
Question:
Would I loss all right on my patent if I sign the 37 CFR 1.63. Since company is the one paid for the patent, do I have any right on my patent? Do I have right to sale my part to the company?
Submitted: 10 months ago.
Category: Intellectual Property Law
Expert:  Alex Reese replied 10 months ago.

hello. if you are an employee then whether you have patent rights depends on your employment agreement with them...there is a high probability that you have no rights besides being listed as inventor. Most employers have clear provisions in their employment agreements that they own all IP created by their employees (at least all IP that relates to their scope of work OR is created using company time/resources).

Expert:  Alex Reese replied 10 months ago.

The CFR 1.63 is just the inventor's oath/declaration and it has nothing to do with ownership (as an inventor you have to sign that or the patent isn't even valid)...but they might have you sign another doc that relates to the assignment.

Expert:  Alex Reese replied 10 months ago.

let me know if you need clarification, but generally speaking, if you invent something related to your scope of employment (i.e. in the same field as your job duties or employer's business) then your employer will own it

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