Patent Attorney and Founder
Question:
So, I have a question about reviving an abandoned patent where I was the inventor, but the company held the patent. I have two patents where I was the lead inventor. I did the work for my employer at the time, and they paid for all the patent applications. After I left the company, they stopped pursuing both product development projects for budgetary reasons. The patents were awarded and then abandoned. I’m not clear on the exact timeline since I wasn’t with the company. Can I pay to revive the patents and then be the owner? I know that sounds unusual, but I’d like to take them to other companies to help benefit the industry I work in.
Answer:
JD: Well, some basic fundamentals with respect to the employer-employee relationship are important here. The answer will depend on whether you, as the employee, were under an obligation to assign your invention rights to the company. In almost every case, especially with big companies that have detailed employment contracts, there will be an obligation to assign invention rights. They’re paying your salary, providing access to information and trade secrets, and investing in you. As part of your job, you’re innovating and creating solutions, so the company likely owns any related patent filings and patents, even if they are abandoned.
JD: Although you didn’t specify in your question, I’m guessing you had to sign an agreement as an inventor, assigning your rights to the business entity. Thus, your former employer owns those now-abandoned patent applications. Typically, applications are abandoned because they were not responded to in time, possibly due to an office action or the examiner finding prior art. Once a patent is issued, if you do not pay the maintenance fees at three, seven, and eleven years, it will expire early and can be considered abandoned. There are ways to petition for paying a late fee, but you must present reasonable circumstances.
JD: If you’re interested in reviving the patent, you need to get in touch with your former employer and see if they’re willing to transfer ownership. They might do it for free or for a nominal fee if they have no commercial interest in it. Moving the ownership from the company to you is the first step if you want to attempt a revival. It’s possible, but you’ll need to prove there was an additional burden or financial issue that prevented earlier revival.