--On Friday, June 22, 2012 16:52 -0400 Jorge Contreras
<cntreras@xxxxxxxxx> wrote:
>> [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).
Jorge, while I understand your reasoning, it seems to me that
you are creating a loophole here that we don't want (and that
isn't justified by the BCP). Consider the following scenario:
While working for company X, I invent something and a patent
application is filed with my name as the inventor. According to
company policy, I assign all rights to the patent (if awarded)
to the company. I then leave company X and join company Y.
Just to make this a little easier by avoiding some of the
complex issues associated with disclosing patent applications),
assume that there are no survivable NDAs with company X that
prevent my disclosing the patent application to company Y or to
the IETF. As another simplification, assume that I became
active in the IETF only when I joined company Y (that avoids any
question about my obligation or lack thereof to disclose while I
was still working for company X).
Now, I find myself in a WG that is considering a technology that
I reasonable believe interacts with the patent application in
question. There is no basis on which I can claim that I didn't
know about that application... after all, I signed it. So I
think I'm _obligated_ to disclose. Whether that disclosure is
1st party (I'm the inventor) or third party (the thing belongs
to company X) seems like uninteresting hair-splitting. And my
disclosure might say "I know about this application but you need
to check with the patent owner, which was Company X when last I
had first-hand knowledge, as to what its current status is".
But asserting that such a disclosure is not required puts the
notion of what I might reasonably be expected know into a rather
different light, one that, IMO, might be very damaging to the
process.
And, no, I don't think the Note Well needs to go nearly into
that level of detail. For it, it seems to me that it is
sufficient to say that one is obligated to disclose if one has
first-hand, direct, knowledge of the patent (or application) and
that disclosure under other circumstances is encouraged and
might, in some cases, be required.
john