Advice Before Filing a Patent

Posted by Michael Shimokaji | Dec 26, 2014 | 0 Comments

Question: I am a nurse and work as an independent contractor for a large medical group. They do not provide me any equipment. I just provide my services for them for which I am paid in the form of a 1099. I have been doing so for ten years. If I invent a medical device based on what I have observed as a need while working, can they claim ownership of it? Our contract makes no mention of inventions. Just to be safe would it be better that I quit my position with them prior to filing my patent?

Answer: Yes, it would be “safer” to quit, but perhaps your question is whether it is necessary.

If you have already invented the device, quitting now would seem to make little difference on whether the company has a legitimate claim to your invention. If you have not yet invented the device, quitting now could help insulate you from a claim of ownership by the company.

If your invention has nothing to do with the work for which you have been hired, and there is nothing in your contract to the contrary, it seems that the company would not have a claim of ownership to your invention – whether you quit or not.

About the Author

Michael Shimokaji

Michael’s expertise includes the strategic development of patent and trademark portfolios. He identifies those patents and trademarks that are valuable to his clients by providing them with a competitive advantage. Then, Michael obtains patent and trademark registrations in the US and abroad.


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