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Old 06.03.2019, 14:39
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selling own invention while employed ?

So, last year (2018) I was for the most time unemployed. I used this time (apart from looking for a new job) for building a cool invention I have been brooding on for some time now. My idea works very well, so good in fact a company invited me for a demonstration (September 2018). They were having a contest where small companies and universities were allowed to demo their tech in this field, and then the company would decide which one to buy. Unfortunately they did not choose mine, but undeterred I soldiered on and contacted another company.


Then in January I landed a temp job for 6 months. In the contract it states that all inventions done (even on my own time) are their property. Normally I would never sign this (have successfully refused so in the past) but with the RAV breathing down my neck I felt I could not refuse this clause.


So now the second interested-in-my-invention company (in contact since december, so also from before the 6 month contract job) send me an NDA so I can show them what I build and give them a gist of how it works.



But how does the law look at this situation ? In my limited opinion the invention and design were all done during my unemployment period, so my current boss has no right to it as it was even demo-ed a few months before I signed up for my 6 month contract. Can I just sign the NDA with the interested company and show them my stuff ? Common decency tells me to inform my current company where I'm working the 6 month contract, but am afraid they will claim the invention for themselves (a division unrelated to where I work, has done work on this in the past, so they can use it). Or they could terminate my current 6 month contract. I can also just not tell my current company (as I feel it is none of their business) but am afraid for consequences. I can also ask the interested company to wait 4 months, but am afraid to loose them (work the iron when it is hot).


Any thoughts ?
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Old 06.03.2019, 14:59
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Re: selling own invention while employed ?

Your invention was done before you signed the contract, and thus they are unrelated to each other.
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Old 06.03.2019, 15:03
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Re: selling own invention while employed ?

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So, last year (2018) I was for the most time unemployed. I used this time (apart from looking for a new job) for building a cool invention I have been brooding on for some time now. My idea works very well, so good in fact a company invited me for a demonstration (September 2018). They were having a contest where small companies and universities were allowed to demo their tech in this field, and then the company would decide which one to buy. Unfortunately they did not choose mine, but undeterred I soldiered on and contacted another company.


Then in January I landed a temp job for 6 months. In the contract it states that all inventions done (even on my own time) are their property. Normally I would never sign this (have successfully refused so in the past) but with the RAV breathing down my neck I felt I could not refuse this clause.

So now the second interested-in-my-invention company (in contact since december, so also from before the 6 month contract job) send me an NDA so I can show them what I build and give them a gist of how it works.

But how does the law look at this situation ? In my limited opinion the invention and design were all done during my unemployment period, so my current boss has no right to it as it was even demo-ed a few months before I signed up for my 6 month contract. Can I just sign the NDA with the interested company and show them my stuff ? Common decency tells me to inform my current company where I'm working the 6 month contract, but am afraid they will claim the invention for themselves (a division unrelated to where I work, has done work on this in the past, so they can use it). Or they could terminate my current 6 month contract. I can also just not tell my current company (as I feel it is none of their business) but am afraid for consequences. I can also ask the interested company to wait 4 months, but am afraid to loose them (work the iron when it is hot).

Any thoughts ?
Sorry but how can that clause even be legal? It is your intellectual property and unrelated to that job, right?

Are you sure the clause doesn't refer to anything made by you during the employment period that involves things competetively related to their business?
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Old 06.03.2019, 15:16
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Re: selling own invention while employed ?

I have limited experience with litigious environment in CH. What I would do, I would strike the iron (as you sad), but would have ample evidence of your prototypes presented to the companies (contest) prior to your employment. That way you would have a defense (documented evidence) of your claim that the invention was formulated prior to you signing with a current employer. Of course if you become wildly successful and known in the industry they will most likely sue you, just in case. They will claim that you used their know-how to improve on your prototype and thus in patent infringement position. But by then you will be the richest man in your canton and could just settle out of court.  Consultation with a patent attorney would not hurt.
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Old 06.03.2019, 15:59
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Re: selling own invention while employed ?

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I have limited experience with litigious environment in CH. What I would do, I would strike the iron (as you sad), but would have ample evidence of your prototypes presented to the companies (contest) prior to your employment. That way you would have a defense (documented evidence) of your claim that the invention was formulated prior to you signing with a current employer. Of course if you become wildly successful and known in the industry they will most likely sue you, just in case. They will claim that you used their know-how to improve on your prototype and thus in patent infringement position. But by then you will be the richest man in your canton and could just settle out of court.  Consultation with a patent attorney would not hurt.
You ment to say buy the company and sack every asshole involved with disturbing him with their nonsense.

Am I right?
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Old 06.03.2019, 16:24
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Re: selling own invention while employed ?

do you have any patents or other registered IP before the date of employment? if not, i would create a new company to employ you specifically for the purpose of developing the said technology with the same clause on ownership of ip and have it registered with the new company.

typically if you have inventions in progress, you should specifically carve these out of your employment contract so that the clause doesn't apply.
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Old 06.03.2019, 17:03
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Re: selling own invention while employed ?

I can't offer legal advice but can say that selling an Invention will probably take longer than 6 months, at least in my limited experiences. It can be quite difficult to gain the attention of the key people or makers that can help you. Most of the time at in the USA they say only only 1-3% of patented items make more than the cost of the patent, of course the USA is not Switzerland. Many items nowadays are also not patented as well. Sounds like your idea is more complex than a simple consumer product. Best of Luck!
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Old 06.03.2019, 17:06
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Re: selling own invention while employed ?

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So, last year (2018) I was for the most time unemployed. I used this time (apart from looking for a new job) for building a cool invention I have been brooding on for some time now. My idea works very well, so good in fact a company invited me for a demonstration (September 2018). They were having a contest where small companies and universities were allowed to demo their tech in this field, and then the company would decide which one to buy. Unfortunately they did not choose mine, but undeterred I soldiered on and contacted another company.


Then in January I landed a temp job for 6 months. In the contract it states that all inventions done (even on my own time) are their property. Normally I would never sign this (have successfully refused so in the past) but with the RAV breathing down my neck I felt I could not refuse this clause.


So now the second interested-in-my-invention company (in contact since december, so also from before the 6 month contract job) send me an NDA so I can show them what I build and give them a gist of how it works.



But how does the law look at this situation ? In my limited opinion the invention and design were all done during my unemployment period, so my current boss has no right to it as it was even demo-ed a few months before I signed up for my 6 month contract. Can I just sign the NDA with the interested company and show them my stuff ? Common decency tells me to inform my current company where I'm working the 6 month contract, but am afraid they will claim the invention for themselves (a division unrelated to where I work, has done work on this in the past, so they can use it). Or they could terminate my current 6 month contract. I can also just not tell my current company (as I feel it is none of their business) but am afraid for consequences. I can also ask the interested company to wait 4 months, but am afraid to loose them (work the iron when it is hot).


Any thoughts ?
I suspect you are way over thinking this.

First of all you have already completed your invention and you have demoed it as well so no issues there. And I don't thing your contract says anything prohibiting you marketing an idea you have already developed.

All this potential buyer is doing is asking you to sign a DNA to ensure that you will not disclose any information they tell you during the demo, no more than that. I don't see where you have an issue in signing it.

And to add a large dose of reality to your thinking... it may never go beyond your demo to them and even if it does it will take months before anything concrete starts to happen by which time you will have finished the work contract in any case.

I would say just go for it.
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Old 07.03.2019, 00:59
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Re: selling own invention while employed ?

As others have said: just go for it. To sign an NDA is not related to the clause you have signed, and to reach out the final negotiation phase it would take longer than a few months.

You have not mentioned if you idea is software based (not patentable in Europe, except few specific cases) or not.

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Old 07.03.2019, 08:06
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Re: selling own invention while employed ?

well , in my minds eye, they will read the presentation I made about my idea, realize its brilliance and shower me with money (all within a week).


It's an algorithm, more specifically about how to start an electric motor from standstill, under high load but without rotor position sensors. Many ebikes, powertools, but also for instance the BWM i3 all have a more or less elaborate sensor system to measure the rotor position, so that the correct signals can be applied to make it turn. And preferably in the right direction, and also from a dead stop on a hill. In my case these sensors (plus wiring etc) are no longer necessary. Systems like this already exist but (to me) are done very primitive, mine is much more refined... I don't think this sort of thing falls under software as it also requires specific electronics.
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Old 07.03.2019, 08:28
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Re: selling own invention while employed ?

Is your algo patentable?
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Old 07.03.2019, 08:44
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Re: selling own invention while employed ?

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Is your algo patentable?

No idea. Back in the day when I worked for Philips Research we were taught never to look into this ourselves but let the patent department handle this. This so that you can always honestly claim you didn't know... So I don't know. I know the simple (primitive) system exists, but not if my system is known.


As a private person I don't believe in applying for patents as I cannot afford to defend them (the patent system is rotten to the core). So that is for the interested company to figure out, if patentable they can do so.
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Old 07.03.2019, 09:03
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Re: selling own invention while employed ?

Oh, really? I did not know that. I have read that sometimes it is hard to patent pure software algorithm, but yours seem to be in better position to be patented as it is applicable to analog machinery and not pure software.
I'd be very paranoid about potential clients simply stealing my product from me. Wish you best of luck.
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Old 07.03.2019, 09:47
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Re: selling own invention while employed ?

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well , in my minds eye, they will read the presentation I made about my idea, realize its brilliance and shower me with money (all within a week).


It's an algorithm, more specifically about how to start an electric motor from standstill, under high load but without rotor position sensors. Many ebikes, powertools, but also for instance the BWM i3 all have a more or less elaborate sensor system to measure the rotor position, so that the correct signals can be applied to make it turn. And preferably in the right direction, and also from a dead stop on a hill. In my case these sensors (plus wiring etc) are no longer necessary. Systems like this already exist but (to me) are done very primitive, mine is much more refined... I don't think this sort of thing falls under software as it also requires specific electronics.
Ah, so it is just an idea about how to do something... you cant own an idea in the commercial since no matter how brilliant it is, so there is not much your employer could do even if they want to.

Of course combining your idea with something physical to produce an actual product is something different. If you were to work on such a product while still employed, then there might be an issue....

Id say go ahead sign the NDA, have the discussion etc., but once you start to consider a commercially viable product, get proper legal advice.
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