During my postdoc I work at a large company.

This year I came up with an algorithm, and they wanted to patent it. Europe doesn't allow software patents, so they made one of these "it's a hardware device that [insert software patent here]" patents, which is essentially a software patent that they've tried to sneak by the examiners. After it was submitted, I found a publication from before the patent was submitted, which describes a highly similar algorithm and should invalidate the patent (as "obvious").

When I told my employer (even though I get a bonus and a percent of revenue from products using the patent, I wanted to be ethical, and not to put my pride above being a good employee), they said that they didn't care, and that getting a patent awarded was the most important thing, even if it wasn't enforceable, because it would still make competitors afraid to working in that area. But I was surprised when they also said that they would try to use an invalid patent as leverage for little start ups and academics to work exclusively with us and not with any competitors. When I asked who would continue that line of research if I was ever fired or left the job to move back home, they said they didn't care as long as it wasn't used by competitors. I see where they're coming from, but unfortunately, no one else at the company is remotely knowledgeable in the area.

First question: Is it good for me / good for the world to withdraw the patent? Should I just add it to my C.V., take the bonus and not worry that it was a (sort of) waste of money for my employer / bad for the world? There may be a chance that I can convince my employer to withdraw the patent, and if I am given this choice, my choice would be to withdraw it. But I would like to hear if you think I am being naive. After all, it is acknowledged by patent experts that we've employed that the patent wouldn't hold up under litigation (there are a couple of reasons it's invalid: it is a "dressed-up" software patent and not an actual "device", prior art/obviousness); so if it isn't withdrawn, I could still list it on my C.V. and receive the bonuses without worrying that it would inhibit my ability to continue my academic research if I were to leave my job. I realize how absurd this is, but I can't help but wonder if I am naive to try to avoid working within the broken patent system.

Second question: Do I have (ethical) options to withdraw it / remove my name from it? The European patent examiner left an email address where he/she could be reached if we become aware of any additional prior art. To the best of your knowledge, am I allowed to write to the patent examiner from home to confidentially disclose this prior art? On one hand, my intuition says that I should be allowed to email the examiner myself because the patent has my name on it and I am disclosing nothing confidential; however, I worry that this may be unethical / that I could get into trouble from this. And to be fair, the examiner emailed me (through the submitting attorney) to ask questions regarding prior art, questions that led me to find the invalidating prior research.

After finding prior art, I immediately showed the lawyers, at the cost of my own bonus. In my opinion, a dubious patent only hurts the world (does not protect employer, but prevents future innovation by others, including myself); I only ask whether there is an ethical mechanism to withdraw it since it has my name on it. If it was a valid patent, I wouldn't ask. I am concerned with 1) not being part of the patent trolling machine and 2) having other people (inside the company or out) steward and work on the idea in the future (in addition to myself). It is an elegant idea, and it would be a pity for others to be afraid simply because of a useless patent. If the patent was useful for litigation I would completely understand and respect the company's control of the idea; in that case they would profit and it would even look good on my C.V.

  • I removed some parts of your question which have nothing to do with the question at hand. Workplace surveillance and working atmosphere are topics you can already find plenty of questions and answers about here, so there is no need to bury your actually interesting question beneath it. When you ask questions here, please try to stay focused on the actual issue. That way you make the question more useful to future visitors because it applies to a wider range of situations. Also, the question is easier to read when it is shorter. – Philipp Jul 12 '15 at 10:25
  • By the way: we also have a stackexchange site dedicated to busting vacuous patents: patents.stackexchange.com – Philipp Jul 12 '15 at 10:27
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    I don't understand the title, "patent after leaving a job". Are you still employed there (as the body implies), or is this an ex-employer? – Monica Cellio Jul 12 '15 at 18:08

Undisclosed prior art is an extraordinarily good way of invalidating an issued patent.

You've met your basic ethical duty as an inventor by disclosing to your employer this prior art you discovered. You've left it to them -- specifically to their patent agent or patent attorney -- to decide whether they're going to spend the time and money to pursue this patent, and whether they will pass on your disclosure to the patent examiner.

Don't worry about the problems your patent might create for other entrepreneurs. If they know what they're doing they will also discover the prior art you discovered, and they'll know what to do. In reality, these big patent portfolios are used by bigger companies as currency. If, for example, IBM goes after ABB for a patent infringement, ABB can respond saying "we'll license our patents to you in return for you licensing our patents to us." Your patent will simply be one of those cross-licensed patents.

As for whether you want to participate in software patent efforts in future, that's a decision you can make. If you decide not to, you probably should avoid employment with companies that like to play this patent-portfolio game.

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I don't know how to answer the first question (can or should you contact the EU patent examiner with the knowledge that you have regarding prior art). I suspect there are legalities involved, and a company may have certain rights to work you performed during your employment - which could get you into hot water if you violate them. I would suggest talking with the EFF (Electronic Freedom Foundation) and ask if they can direct you to any lawyers who could competently answer your question, who would give you a very low-cost initial consult.

For your second question - yes, unfortunately, I think you're being naive. Amassing a large patent portfolio and building in a fear of costly legal reprisals is how a lot of biomedical and technology companies operate, primarily because they are areas where visibly profitable discoveries are still being made, and because a few companies haven't already established themselves as the 800-lb gorilla who will squash anyone else who dares to try and enter the field. Even the companies who aren't out for world domination will want to amass any patent they can, and if it's invalidated later...pff, they'll have gotten several years or even decades of "this is our territory, better not try and innovate anything because our patents will mean that you can't profit from it because we got there first" out of it. Businesses are Not About Playing Nice. They're about figuring out the rules of the system at any given time, and then bending those rules in their favor as aggressively as possible.

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    unfortunately the EFF is very much a USA based org - and from its recent behaviour it seems to have been taken over by entryists – Pepone Jul 19 '14 at 18:01

The European patent examiner left an email address where he/she could be reached if we become aware of any additional prior art.

That pretty much answers your question. The determination as to whether the invention is patentable is the examiner's prerogative not yours.I would send her the info and let her make the determination.

You want to make sure that the info could not be traced back to you. You could arrange with her to give the info through some third party that she trusts. You want to build some deniability in case your employer goes after you. I doubt that your employer is going to focus al that hard on you since their own experts have declared your invention non-patentable. There is more than one suspect in this case and don't take any high profile action or make any high profile statement that would cause the employer to zero in you as the prime suspect.

As for your second question:

Your employer's mind is already made up, and you have neither the power nor the influence nor the ability to build coalitions within the company to change their minds. Don't take any high profile action that points to you as the prime suspect if and when the application gets denied.

You could mention in your Cv that the company is filing for a patent as a result of your work, and leave it at that. If an interviever pushes you about it, say that filing for a patent was your employer's idea, that it's a long way from filing for a patent to getting one and change the subject back to whatever else you were doing for your current employer.

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So let me get this right you have a disagreement with your employer or with software patents in general and you seem to want to find way of damaging you employer by invalidating a patent?

Its up to the patent examiner to do this this prior art may or may not invalidate the patent its nit your job to decide this.

You do have a duty to your employer to be a good “servant” what you suggesting is very dubious and is in my opinion unethical – note I am a Union activist in the largest European union that represents scientific and technical staff I do not take the employers side lightly in this.

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  • I presume you are the downvote. It is my job because I was part of the patent search. After a lawyer emailed me to ask a different question regarding prior art, I found an existing derivation while searching for a paper she mentioned. After finding prior art, I immediately showed the lawyers, at the cost of my own bonus. In my opinion, a dubious patent only hurts the world (does not protect employer, but prevents future innovation by others, including myself); I only ask whether there is an ethical mechanism to withdraw it since it has my name on it. If it was a valid patent, I wouldn't ask. – ObviouslyAnonymous Jul 19 '14 at 18:34
  • I am not anyone's servant. I am a professional. I have a duty to my employer. I also have a duty to my community and to the public at large. Just because my employer pays doesn't mean that they own me. – Vietnhi Phuvan Jul 19 '14 at 23:31
  • @VietnhiPhuvan err as this is an English language board pretty much all Anglo-Saxon employment law descends from the "master and servants acts" - this does include the USA which inherited a lot from English common law. But all employees do have a duty towards there employer -that's not the same as being owned – Pepone Jul 20 '14 at 11:22
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    @Pepone My duty to an employer does not include acting unethically, and I will put my job on the line over this - that's why I always keep a cash reserve in the bank, a line of credit that's clear, my work experience current, my skills set hot, my resume up to date and my professional networks alive - in case my employer takes me up on my offer. – Vietnhi Phuvan Jul 20 '14 at 12:11

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