Ownership of expired patent

[Ron Newman]

I was awarded a software patent 30 years ago while at a corporate job.  That patent has since expired, of course.  I assume I signed a work-for-hire agreement the first day on that job.

Now that it's expired, I also assume the corporation still owns the code, and so I'm not free to open source it.  Correct?

Any IP attorneys here?

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[Tom Johnson]

Would not the corporation have to renew the patent at some point?

Tom

On Tue, Jul 2, 2019 at 3:55 PM Ron Newman <[hidden email]> wrote:

I was awarded a software patent 30 years ago while at a corporate job.  That patent has since expired, of course.  I assume I signed a work-for-hire agreement the first day on that job.

Now that it's expired, I also assume the corporation still owns the code, and so I'm not free to open source it.  Correct?

Any IP attorneys here?

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[Ron Newman]

I think the patent, which is non-renewable, and the code implementing the patent are two separate things.  The first they lose rights over, but the second is covered by a work-for-hire agreement since it could be used internally, or even sold as a product by the corporation without patent.  But I could be wrong.

On Tue, Jul 2, 2019 at 4:06 PM Tom Johnson <[hidden email]> wrote:

Would not the corporation have to renew the patent at some point?

Tom

On Tue, Jul 2, 2019 at 3:55 PM Ron Newman <[hidden email]> wrote:

I was awarded a software patent 30 years ago while at a corporate job.  That patent has since expired, of course.  I assume I signed a work-for-hire agreement the first day on that job.

Now that it's expired, I also assume the corporation still owns the code, and so I'm not free to open source it.  Correct?

Any IP attorneys here?

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[Ron Newman]

P.S.  A more subtle question is what if I rewrote the formerly-patented application in a different language.  Does a work-for-hire cover ideas?  I think it does.

On Tue, Jul 2, 2019 at 4:11 PM Ron Newman <[hidden email]> wrote:

I think the patent, which is non-renewable, and the code implementing the patent are two separate things.  The first they lose rights over, but the second is covered by a work-for-hire agreement since it could be used internally, or even sold as a product by the corporation without patent.  But I could be wrong.

On Tue, Jul 2, 2019 at 4:06 PM Tom Johnson <[hidden email]> wrote:

Would not the corporation have to renew the patent at some point?

Tom

On Tue, Jul 2, 2019 at 3:55 PM Ron Newman <[hidden email]> wrote:

I was awarded a software patent 30 years ago while at a corporate job.  That patent has since expired, of course.  I assume I signed a work-for-hire agreement the first day on that job.

Now that it's expired, I also assume the corporation still owns the code, and so I'm not free to open source it.  Correct?

Any IP attorneys here?

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[Stephen Guerin-5]

Not a lawyer /  this is my understanding.

Yes, the firm owns the copyright to the code and is a form of intellectual property independent of patent.

Copyright is owned by the author (or entity that had work-for-hire agreements) at the moment of creation.

As an author or someone that had access to proprietary information during it's creation, you can not rewrite it in a different language or transfer any knowledge to someone who is. it would violate the copyright. If an independent person saw the product and wanted to re-implement the functionality without access to the code or other proprietary information they could do so in a "clean room design" process:  https://en.wikipedia.org/wiki/Clean_room_design

-Stephen

On Tue, Jul 2, 2019 at 4:13 PM Ron Newman <[hidden email]> wrote:

P.S.  A more subtle question is what if I rewrote the formerly-patented application in a different language.  Does a work-for-hire cover ideas?  I think it does.

On Tue, Jul 2, 2019 at 4:11 PM Ron Newman <[hidden email]> wrote:

I think the patent, which is non-renewable, and the code implementing the patent are two separate things.  The first they lose rights over, but the second is covered by a work-for-hire agreement since it could be used internally, or even sold as a product by the corporation without patent.  But I could be wrong.

On Tue, Jul 2, 2019 at 4:06 PM Tom Johnson <[hidden email]> wrote:

Would not the corporation have to renew the patent at some point?

Tom

On Tue, Jul 2, 2019 at 3:55 PM Ron Newman <[hidden email]> wrote:

I was awarded a software patent 30 years ago while at a corporate job.  That patent has since expired, of course.  I assume I signed a work-for-hire agreement the first day on that job.

Now that it's expired, I also assume the corporation still owns the code, and so I'm not free to open source it.  Correct?

Any IP attorneys here?

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[Russell Standish-2]

On Tue, Jul 02, 2019 at 04:55:59PM -0600, Stephen Guerin wrote:

> Not a lawyer /  this is my understanding.
>
> Yes, the firm owns the copyright to the code and is a form of intellectual
> property independent of patent.
>
> Copyright is owned by the author (or entity that had work-for-hire agreements)
> at the moment of creation.
>
> As an author or someone that had access to proprietary information during it's
> creation, you can not rewrite it in a different language or transfer any
> knowledge to someone who is. it would violate the copyright. If an independent
> person saw the product and wanted to re-implement the functionality without
> access to the code or other proprietary information they could do so in a
> "clean room design" process:  https://en.wikipedia.org/wiki/Clean_room_design
>

If you've rewritten the code without access to the original, you
should be safe from copyright infringement. I guess it is a little
harder to prove that you didn't have access to the original code when
once you did, which is perhaps why the clean room design process is
suggested.

You may, however, open yourself up to being sued under any non
disclosure agreement (NDA) you might have signed as part of your
work-for-hire agreement. You should check the exact wording of that
agreement.

> -Stephen
> _______________________________________________________________________ 
> CEO, Simtable  http://www.simtable.com
> 1600 Lena St #D1, Santa Fe, NM 87505
> office: [phone] mobile: [phone]
> twitter: @simtable
>
>
> On Tue, Jul 2, 2019 at 4:13 PM Ron Newman <[hidden email]> wrote:
>
>     P.S.  A more subtle question is what if I rewrote the formerly-patented
>     application in a different language.  Does a work-for-hire cover ideas?  I
>     think it does.
>
>     Ron Newman, M.S., M.M.E.
>     Founder, IdeaTreeLive.com Knowledge Modeling
>     www.RonPiano.com
>     Blog
>
>
>
>
>
>
>     On Tue, Jul 2, 2019 at 4:11 PM Ron Newman <[hidden email]> wrote:
>
>         I think the patent, which is non-renewable, and the code implementing
>         the patent are two separate things.  The first they lose rights over,
>         but the second is covered by a work-for-hire agreement since it could
>         be used internally, or even sold as a product by the corporation
>         without patent.  But I could be wrong.
>
>         Ron Newman, M.S., M.M.E.
>         Founder, IdeaTreeLive.com Knowledge Modeling
>         www.RonPiano.com
>         Blog
>
>
>
>
>
>
>         On Tue, Jul 2, 2019 at 4:06 PM Tom Johnson <[hidden email]> wrote:
>
>             Would not the corporation have to renew the patent at some point?
>             Tom
>
>             ============================================
>             Tom Johnson - [hidden email]
>             Institute for Analytic Journalism   --     Santa Fe, NM USA
>             505.577.6482(c)                                    505.473.9646(h)
>             NM Foundation for Open Government
>             Check out It's The People's Data                 
>             ============================================
>
>
>             On Tue, Jul 2, 2019 at 3:55 PM Ron Newman <[hidden email]>
>             wrote:
>
>                 I was awarded a software patent 30 years ago while at a
>                 corporate job.  That patent has since expired, of course.  I
>                 assume I signed a work-for-hire agreement the first day on that
>                 job.
>
>                 Now that it's expired, I also assume the corporation still owns
>                 the code, and so I'm not free to open source it.  Correct?
>
>                 Any IP attorneys here?
>
>                 Ron Newman, M.S., M.M.E.
>                 Founder, IdeaTreeLive.com Knowledge Modeling
>                 www.RonPiano.com
>                 Blog
>
>
>
>
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--

----------------------------------------------------------------------------
Dr Russell Standish                    Phone [phone] (mobile)
Principal, High Performance Coders
Visiting Senior Research Fellow        [hidden email]
Economics, Kingston University         http://www.hpcoders.com.au
----------------------------------------------------------------------------

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[Barry MacKichan]

My understanding is the same as Steve’s, but I’d like to add that most of these items can be overridden by other agreements such as NDA, non-compete, etc. or the fine print in the work-for-hite agreement. Usually when I had these agreements with employees, there was a time limit in the contract. Check these if you still have them.

--Barry

On 2 Jul 2019, at 18:55, Stephen Guerin wrote:

Not a lawyer /  this is my understanding.

Yes, the firm owns the copyright to the code and is a form of intellectual property independent of patent.

Copyright is owned by the author (or entity that had work-for-hire agreements) at the moment of creation.

As an author or someone that had access to proprietary information during it's creation, you can not rewrite it in a different language or transfer any knowledge to someone who is. it would violate the copyright. If an independent person saw the product and wanted to re-implement the functionality without access to the code or other proprietary information they could do so in a "clean room design" process:  https://en.wikipedia.org/wiki/Clean_room_design

-Stephen

On Tue, Jul 2, 2019 at 4:13 PM Ron Newman <[hidden email]> wrote:

P.S.  A more subtle question is what if I rewrote the formerly-patented application in a different language.  Does a work-for-hire cover ideas?  I think it does.

On Tue, Jul 2, 2019 at 4:11 PM Ron Newman <[hidden email]> wrote:

I think the patent, which is non-renewable, and the code implementing the patent are two separate things.  The first they lose rights over, but the second is covered by a work-for-hire agreement since it could be used internally, or even sold as a product by the corporation without patent.  But I could be wrong.

On Tue, Jul 2, 2019 at 4:06 PM Tom Johnson <[hidden email]> wrote:

Would not the corporation have to renew the patent at some point?

Tom

On Tue, Jul 2, 2019 at 3:55 PM Ron Newman <[hidden email]> wrote:

I was awarded a software patent 30 years ago while at a corporate job.  That patent has since expired, of course.  I assume I signed a work-for-hire agreement the first day on that job.

Now that it's expired, I also assume the corporation still owns the code, and so I'm not free to open source it.  Correct?

Any IP attorneys here?

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[Ron Newman]

Good point on time limit.  I'll check my papers in storage in case they're there.

On Sat, Jul 6, 2019 at 3:30 PM Barry MacKichan <[hidden email]> wrote:

My understanding is the same as Steve’s, but I’d like to add that most of these items can be overridden by other agreements such as NDA, non-compete, etc. or the fine print in the work-for-hite agreement. Usually when I had these agreements with employees, there was a time limit in the contract. Check these if you still have them.

--Barry

On 2 Jul 2019, at 18:55, Stephen Guerin wrote:

Not a lawyer /  this is my understanding.

Yes, the firm owns the copyright to the code and is a form of intellectual property independent of patent.

Copyright is owned by the author (or entity that had work-for-hire agreements) at the moment of creation.

As an author or someone that had access to proprietary information during it's creation, you can not rewrite it in a different language or transfer any knowledge to someone who is. it would violate the copyright. If an independent person saw the product and wanted to re-implement the functionality without access to the code or other proprietary information they could do so in a "clean room design" process:  https://en.wikipedia.org/wiki/Clean_room_design

-Stephen

On Tue, Jul 2, 2019 at 4:13 PM Ron Newman <[hidden email]> wrote:

P.S.  A more subtle question is what if I rewrote the formerly-patented application in a different language.  Does a work-for-hire cover ideas?  I think it does.

On Tue, Jul 2, 2019 at 4:11 PM Ron Newman <[hidden email]> wrote:

I think the patent, which is non-renewable, and the code implementing the patent are two separate things.  The first they lose rights over, but the second is covered by a work-for-hire agreement since it could be used internally, or even sold as a product by the corporation without patent.  But I could be wrong.

On Tue, Jul 2, 2019 at 4:06 PM Tom Johnson <[hidden email]> wrote:

Would not the corporation have to renew the patent at some point?

Tom

On Tue, Jul 2, 2019 at 3:55 PM Ron Newman <[hidden email]> wrote:

I was awarded a software patent 30 years ago while at a corporate job.  That patent has since expired, of course.  I assume I signed a work-for-hire agreement the first day on that job.

Now that it's expired, I also assume the corporation still owns the code, and so I'm not free to open source it.  Correct?

Any IP attorneys here?

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