Expert: Kacey Cahill - 12/27/2008

Question
how do i find out if my patent has been commercialized, and how do i get my share of compensation? i am an inventor of an epoxy product that was patented, which I made while working in a company in the US, but i left the company (as well as the country) i was working in right afterwards (since i shifted back to my home country), so i dont know what happened after that. however, i looked up my patent online and it shows the product has been patented in both USA as well as Europe. my name is listed there, but also listed are the names of 2 other employees and the president of the company, who had nothing to do with the product. in fact, in the US patent, my name is listed last (altho i was the sole inventor). the online records show that the patent was renewed year after year, so i am sure they were making money off of it because no one wud pay renewal fees every year just for nothing.

the biggest question is that, since i m no longer with that company and not in contact with them, i have no idea what the president of the company did, if he gave anyone a license for the patent, to which companies and countries he commercialized it to, etc. is there any way to find out these things (apart from asking him directly)?

i also want to know my rights. since i am an inventor (i was actually the SOLE inventor but now the patent record shows 4 inventors), am i entitled to get compensation whenever the patent was commercialized? how wud the amount be decided? what wud be the correct way for me to go about this whole thing so that i get the the compensation due to me (which i really deserve). pls advise and guide me.

Answer
Vandy.  If you worked for the company and developed the technology as part of your job for that company, then the technology is most likely owned by the company.  The company must list the inventor in its patent application, but when the patent issues the inventor transfers the patent to the company.  
Usually companies take care of this with an agreement signed by people like you that say all of the technology you invent is the company's property and you agree to cooperate fully in perfecting the compan's rights to that technology.  

The curious thing about your situation is that you say you are the sole inventor.  If that is the case, they may have listed additional people to make the transfer of the patent easy for them -- that is not involving you.  If this is the case, I would contact the company and explain that you know what they did and it is wrong, etc., and try to work out an arrangement where everybody gets what they should be getting -- this becomes very fact specific.  

Generally speaking though, absence strange circumstances, when you develop a technology as an employee of a company, it is theirs and they do not owe you a piece of any royalties.  Take for example drug companies.  The people that invent the technology, get listed as inventors, etc., and may get a bonus at work, but they do not otherwise get a share of royalties.

Finding out whether the company has licensing deals is difficult.  You need to ask around if you have contacts in this space.  You should also do some research on the internet looking for press releases by likely companies around the time the patent issued announcing deals.  Look on your own former company's website for press releases.  Otherwise, a non-public company has no duty to announce its relationships.  Even public ones only have to announce material ones.

I hope this is helpful, but please keep in mind that this is intended for educational purposes only and is no intended to be legal advise.

Kind Regards,

Kacey Cahill
kcahill@kaceylaw.com
www.kaceylaw.com