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I have been working for a company for 2 years and 2 months part-time during my master's (my thesis was related to the company) and 6 months full-time after graduation. A total of 3 years and 8 months.

I designed some AI applications for them, they are in the process of becoming MVP. Throughout my thesis, I developed a few things, one of which was a fairly novel method. I published a paper with my supervisor a while ago, and I just noticed that some competitor companies patented my idea after my submission.

I share this with my company and they told me that should not be saying anything about it to others until they take an action. They said they do not need to be in a hurry because patents can not be guaranteed to them in a few days, and it takes years.

I have some other papers that I need to publish, and these guys are very slow and they do not understand the value of my work. with these patent things and considering that I signed NDA, I am not able to publish my papers. What should I do?

The job offer that I have from this company is low and I do not think they know the value of my work, so I need to change my job in a few months. How could I manage my patent, projects, and papers?

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    Considering the NDA and patent elements this sounds like you're in "talk to a lawyer" territory. People here can advise you on how to negotiate with your current employer but we can't offer the level legal advice you seem in need of.
    – Lilienthal
    Jan 8, 2022 at 9:05
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    When you became an employee you almost certainly signed some paperwork. There is likely an Intellectual Properties clause in your contract: Read it, understand it and follow it. Chances are the IP is theirs and you have no control over it whatsoever.
    – Hilmar
    Jan 8, 2022 at 13:23

2 Answers 2

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You are discovering the difference between working in academia and industry.

They told me that should not be saying anything about [the patent application] to others until they take an action. They said they do not need to be in a hurry because patents can not be guaranteed [granted?] to them in a few days, and it takes years.

This is correct. Do what they say. If the competitor's patent application was submitted after your paper was published, your work might invalidate that application. But if what you published was theoretical, or proving a principle, and what they are patenting is an application of that theory or principle then it might be allowed. There is a lot of subtle, fine detail to IP law and Patent Attorneys charge big fees to deal with that. Leave this to whoever at your employer deals with the company's IP to judge whether the patent applications are a threat to their business and whether/how the 'prior art' you published can be used, now or in future, to defend against that threat.

I have some other papers that I need to publish, and these guys are very slow and they do not understand the value of my work... What should I do?

In academic terms, you 'need to publish' these papers because guarding your individual reputation and standing in wider academic circles is important - your worth is judged based on how many papers you publish, in which journals, where your name appears in the list of authors and how many citations it gathers in other papers. In industry, the worth of that knowledge is based on applying it to a product that customers are willing to pay for. It's more of a team game, where getting an application into the market first, and maintaining an advantage over the competition is often more valuable to your team (the employer) than publishing because a patent costs a lot to obtain and even more to defend, and, for all that papers in academic journals might burnish the company's technical credentials, they also give the competition a leg-up if they are published before the product is established in the market.

There would have been an agreement in place between you, your university and employer that allows you to write up your work in sufficient detail and share it widely enough to satisfy the requirements of your masters degree. If you think the company is now reneging on that agreement and your masters is at risk, speak with your university tutor - s/he will be able to offer advice on how to resolve that and the university can afford better lawyers than you if it comes to that.

Any IP you have developed outside the masters placement almost certainly belongs entirely to the employer and you should discuss with your boss whether/when you might be able to publish the papers. It's quite possible that they will be slow or even prevent you publishing this because it is their IP and they understand very well the value of your work in commercial terms and want to protect it.

The job offer that I have from this company is low and I do not think they know the value of my work, so I need to change my job in a few months. How could I manage my patent, projects, and papers?

Forget the patent - it's not your patent, it's someone else's application, and this is a matter for your employer.

Given that you feel your salary is low for your skills and experience, work on your assigned projects to the best of you ability then ask for a raise when you have demonstrated value to their business (e.g. for a year as a full-time employee). If you want to, apply to better-paying jobs in the meantime and hand in your notice when you have a firm offer that you prefer. And if you leave this company, forget publishing any papers or applying for patents based on the IP you developed while employed by them - your salary was the reward and recognition for this work.

To me, it reads as if they are valuing your work in commercial terms whereas you are placing more emphasis on the academic value. If publishing your work widely and gaining wide recognition for your individual contribution to a field is of high value to you, you may be better looking for a career in academia than in industry, and accepting that the financial reward may be lower.

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  • Taking up on "Forget the patent - it's not your patent", it depends on where he resides. In Germany, inventors receive a share of the financial success of the patent and the law even forces the company to submit patent applications within a few months, otherwise, they explicitly have to release that idea to the employees so they can make use of it. If they don't do, they have to pay for indemnity.
    – Ben
    Jan 10, 2022 at 8:02
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    @Ben, that's interesting, thank you. My point was that the patent application mentioned in the question was made by another person not connected to happypumpkin or their employer. It's therefore not their patent. The employer might want to contact the patent office to try to block that being granted, or they might want to keep their cards close to their chest, and happypumpkin has to go along with their decision. Even if the employer leaves it up to them, as an individual, happypumpkin almost certainly can't afford the lawyers to enforce what they see as their rights over this IP.
    – Saes
    Jan 10, 2022 at 9:22
  • Sure, I would first question whether the patent is really related to his publishment. It sounds that the time period in between is very close which makes me think they didn't even know the TE. However, what you describe is called "vindication" in German patent law but I don't know how it is abroad.
    – Ben
    Jan 10, 2022 at 9:59
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First of all, familiarize yourself with the rules of the game.

If your competitor has already obtained (or often even filed) a patent before the company you work for, that's off the table. 99% chance your competitor won it. Invalidating a patent in practice, even if you have "proof" of prior art, is a longshot. If you have additional improvements nobody has yet patented that are necessary to make the technology to be commercially successful, those improvements would certainly be of value - perhaps even more so to your internship company since they're now under threat from their competitor. However, the pressure to increase secrecy also increases, and the secrecy may not be helpful to you personally.

For anyone else reading, it would have been more ideal to publish as much as possible while still a student. Other readers would be advised even consider delay finishing their degree if possible (depending on financial impact of course), just to publish more.

In your case, if your company gives you permission to publish, consider doing that. If you have limited time, and depending on your field, it may be an option to publish quickly into Arxiv.

As a practical matter, your chances of getting recognition for your work seem, here, to be higher via academic paper, than via your company filing a patent after you've left and remembering to put your name on it.

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