Conference 7.286::digital

Well, I suppose it's dependant on what you do for DEC. If it's related to
your job, DEC owns it. If it's not, you can persue it on your own.

Even if it's not directly related to your job, you may be better off
giving it to DEC. Assuming it's a real invention (no offense, a lot of things
arn't even if you think so), DEC pays for the patent application (~ $5000 min.)
and you get credit for it on your resume. If DEC does not persue marketing it,
you have grounds (sort of) for developing it. It's a gray area that I have never
personally gotten into but I know people who have.

The resume comment is not at all goofy. In a lot of cases, the statement on the
resume winds up being worth a lot more than the patent.


>the toxic terminator`
"toxic terminator"? What is this, high school?

         I think you should dig up a copy of the agreement you signed when
    you were hired.  That should tell you what's what.
    
                                        Greg

    	If I remember correctly, I think anything you invent which is even
    remotely related to Digital's business, as long as you are a DEC
    employee, belongs to Digital...although your name would be listed as
    the inventor or co-inventor on the patent. You are rewarded with an
    incentive bonus which depends on the "kind" of patent and number of
    inventors on it. If you are the sole inventor, then you can expect
    either $250 or $500 when the patent is filed with the U.S. Patent
    Office and then the same bonus again if/when the patent issues (2-3
    years later typically). There are additional incentive bonuses for
    every 10 patent applications filed and for every 5 patents issued.
    These are more substantial monetary rewards: $2500 and $5000
    respectively.

   There is a recent (July '91) internal publication available which gives an
   overview of the Digital patent process.  It will answer some of your
   questions but it does not address the issue of "who owns the patent rights
   in unique situations".  A good assumption would be that DEC owns it.

   To order, use internal publication order form, part number: EF-A1274-50.
   Title: "Intellectual Property: Digital Guide to the Patent Process"

   Your best bet would be to call the legal counsel for your business unit
   or contact the Patent Services Law Group.

   Hope this helps,
   Mark

 It is possible to apply for a patent yourself. There is a book in the MKO 
 library entitled: "Patent it yourself". The Boston Public Library maintains a 
 US patent database.

 Re: -2

Thank you Mark. Here's some additional info which is slightly redundant
because I wrote it before reading your reply.


  I am the author of the recently published book "Intellectual
  Property: Digital Guide to the Patent Process" which describes what
  Digital and Digital  inventors go through to get a patent. 

  Any patent you develop resulting from your employment must, by law,
  be assigned to your employer if the employer so desires. In
  addition, all Digital employees sign an Employee Agreement Form when
  they are hired. This agreement stipulates that each employee will
  assign to Digital the rights to all  inventions they develop,
  whether or not the invention arises as the result of their
  employment. However, the corporation can, and has, released
  employees from this agreement when the subject matter of the
  invention has nothing to do with the employee's job.

  If Digital applies for a patent for your invention, the corporation
  pays all expenses for the application, which can be considerable. In
  addition, the inventor gets a small award from Digital when the
  application is filed, and another award if and when the patent is
  granted. Additional bonuses are granted for prolific inventors.
  
  The book covers many other topics, too. 

  It was closely scrutinized by a flotilla of Digital attorneys. (I
  am a writer, not a lawyer.) You can order a copy of it through the
  VTX Literature Order System (VTX LOS). The order number is
  EF-A1274-50, and your cost center will be charged about $3.00 (cheap
  enough). Among other things the book contains a copy of the Employee
  Agreement Form, and the award system.

  Bruce

re: .-1

small rathole alert


Anyone know why documents such as these aren't 
freely available over the net?

I've seen other cases where your cost center is
charged (sorry can't remember which docs) and
I've never understood it.

-Tom

The charge is for the cost of distribution and is set by (and goes to) the 
Westover folks. 

It in no way covers the real costs. 

Bruce

	Re: .8  "Distribution costs only"

>The charge is for the cost of distribution and is set by (and goes to) the 
>Westover folks.
>
>It in no way covers the real costs. 

	At the real risk of starting a rathole... Wouldn't posting the book
in this notesfile (or putting it in some other accessible directory with a
pointer in this notesfile) bring the cost of distribution to $0?  The info
could then be spread without getting into this nickle-and-diming level of
$3 cross charges.  (I wonder how much time/money it takes to process a $3
cross charge?)

	And if by "It in no way covers the real costs", you mean that the $3
doesn't cover all the costs of distribution, then posting the book would keep
the Westover folks from losing money on the deal.  Sounds like a "win" all
around.

								-craig

From:	RDVAX::TORRES "Intellectual Property - 223-1010  29-Oct-1991 1459" 
29-OCT-1991 15:30:06.11
To:	@IPPC.DIS
CC:	TORRES
Subj:	Memo on Corporate Patent Award Policy change - FYI


        +--------------------+TM
        |  |  |  |  |  |  |  |
        |d |i |g |i |t |a |l |
        |  |  |  |  |  |  |  |          INTEROFFICE MEMORANDUM
        +--------------------+




        TO: All Digital Employees       DATE:  7 October 1991
            		                FROM:  Tom F. Gannon
                               	        DEPT:  CRA/TPD
                                        DTN :  223-3828
                                        LOC :  MLO1-3/B10
                                        ENET:  RDVAX::GANNON
	


	Subj: Patent Incentive Award Policy Change for Voluntary/
              Involuntary separation of employees
        
            The Corporate Intellectual Property Protection Committee, 
        in recognizing the importance of ensuring the protection of 
        property rights for ideas and innovations and in response to the 
        recent organizational changes in the Company, has revised the 
        Corporate Patent Incentive Award Policy to reflect the voluntary 
        and/or involuntary separation of employees. 
        
            The policy change is reflected in the "special circumstances" 
        section and read as follows; "Voluntary and/or Involuntary 
        separation: If the inventor(s) are otherwise eligible and subject 
        to the other conditions stipulated in the policy, an award will 
        be issued to the inventor". 
        
            This change in policy was accomplished in conjunction with 
        the Patent Service Law Group, the various Business Intellectual 
        Property Protection Committees, the Corporate Policy Committee 
        and the Transition Policy Committee. 
        
            The policy change is effective retroactive to July 1, 1990. 
        The new Corporate Patent Incentive Award policy reflecting this 
        change will be issue under a separate letter. 
        
            Please call upon me if you have any questions and/or need 
        additional clarification.
            
        
            	
            			Tom F. Gannon
            			Chairman, Corporate
            			Intellectual Property Committee

I've been waiting since July, 1989 to find a decent place to post this in this
conference (hope it's still law in California):

"
From:	DECWRL::"[email protected]"  "5-Jul-89 2058 EDT" 6-JUL-1989 10:07:00.57
Subj:	interesting piece of California law

Here is an interesting piece of California law:

     2870. Employment agreements; assignment of rights
        Any provision in an employment agreement which provides that
     an employee shall assign or offer to assign any of his or her rights in
     an invention to his or her employer shall not apply to an invention for
     which no equitpment, supplies, facility, or trade secret information of
     the employer was used and which was developed entirely on the employee's
     own time, and (a) which does not relate (1) to the business of the
     employer or (2) to the employer's actual or demonstrably anticipated
     research or development, or (b) which does not result from any work
     performed by the employee for the employer. Any provision which purports
     to apply to such an invention is to that extent against the public
     policy of this state and is to that extent void and unenforceable.
"

Note that clause b appears particularly useful for the home inventor.  You could
develop something incredibly relevant to Digital, yet if it did not result from
work (and didn't use Digital resources), it would be solely *your* intellectual
property.

I don't know whether this applies to intellectual property agreements signed
outside of California (or to intellectual property agreements for non-California
based companies).  So it may not apply to people who have relocated to Palo
Alto, and it might not apply to any of us.  But the possibilities remain
interesting.
				/AHM

    Re .6:
    
    Different employees signed different "agreements".  Mine said only that
    Digital had the rights to inventions developed as a result of work
    performed for Digital, while on Digital time, or using Digital
    equipment.  It is of dubious value as an agreement anyway, because when
    I was orally offered the job, I explicitly asked if there were any
    agreement to sign and was told no, and the offer letter that followed
    also did not mention any agreement.  Thus, at the time I was asked to
    sign the employee "agreement", I already had the job (and was in fact
    working), and Digital did not offer me any compensation for agreeing to
    the "agreement", so it might not be an enforceable contract.
    
    
    				-- edp

    re .10
    
    Such laws, while well intentioned, are used by lawyers to recommend
    other places for establishing a new business.  If I were to start a
    new business, California is one state I would avoid like the plague.
    
    Dick

EDP's experience matches pretty closely with my own recollection from many years
back.  Also, there have been a number of court cases over intellectual property
rights in the past few years that have, in at least a few states, severely 
restricted the scope of employers claims to employee's inventions that did not 
use property (broadly defined) of the employer in their creation.

/Dave

    RE:   <<< Note 1655.12 by BEING::EDP "Always mount a scratch monkey." >>>

    >I was orally offered the job, I explicitly asked if there were any
    >agreement to sign and was told no, and the offer letter that followed
    >also did not mention any agreement.  Thus, at the time I was asked to
    >sign the employee "agreement", I already had the job (and was in fact
    >working), and Digital did not offer me any compensation for agreeing to
    >the "agreement", so it might not be an enforceable contract.
    
         So, of course, you didn't sign it, right?  Otherwise, I see no
    basis for your "unenforceable contract" thought.  What difference does
    it make if you were already working when you signed the contract?
    
                                      Greg
    

        Back when I was in college, I co-oped with Burroughs. Their
        employee agreement claimed ownership to anything I created, with
        the possible exception of offspring, while I worked for them,
        regardless of subject matter. While I never told them, I had
        several photographs and articles published in a model rocketry
        related publication, under "Copyright Robert G. Kaplow". I got no
        compensation for these pictures or articles. If they really want
        them, they are welcome to go after me or the magazine.
        
        When I started at DEC almost 12 years ago, I specifically noted
        that Digital was more realistic in the paper they had me sign on
        my first day of work. From paragraph 2 of form EN-1078A-06 R675:
        
        "... However, this paragraph 2 shall not apply to developments
        which do not relate to  the actual or anticipated business or
        research and development of DIGITAL or its subsidiary or
        affiliated corporations and which are made or conceived by me
        during other than normal working hours, not on DIGITAL's premesis
        and without the use of DIGITAL's tools, device or equipment, but I
        agree that DIGITAL shall have a non-exclusive royalty free license
        to use such developments for all purposes."
        
        I take it to mean that Digital may use any of my nifyt model
        rocket ideas I've developed over the past 12 years.
        
        As to copyrights, the same agreement states: "4. I will also
        assign to DIGITAL any and all copyrights and reproduction rights
        to any material prepared by me in connection with my employment."
        
        So, unlike Burroughs, Digital leaves to me the copyrights on the
        photographs and articles I've done for the rocket magazine over
        the past 12 years. They also do not own the rights to a
        publication that I headed up the revision process on for this same
        group.

Re .13:

It works both ways - the existance of states with such laws are also factored
into considerations by workers of where they'd like to work.

This statute is probably not an overriding consideration for very many people.
However, the way many people act on this network, it seems that the overall
legal environment can affect the desirability of a locale.  Just sample the
Mass/NH wars in the conferences for either of those states if you have any
doubt.
				/AHM

Re:           <<< Note 1655.10 by TLE::AMARTIN "Alan H. Martin" >>>

>	Subj: Patent Incentive Award Policy Change for Voluntary/
>              Involuntary separation of employees
        
Something seems wrong here if people who have made such valuable contributions 
to Digital as to warrant the filing of patents are being "Involuntarily 
separated".

To me this is another indication that we (Digital) are *not* "doing the right
thing" in terms of these layoffs. 

-  David

    
    >    So, of course, you didn't sign it, right?  Otherwise, I see no
    >   basis for your "unenforceable contract" thought.  What difference
    >   doesit make if you were already working when you signed the contract?
    
                                         
      Because (EDP's assertion is) that the contract was formed at
    the acceptance of the Verbal offer.   One cannot unilaterally
    alter the terms of a contract after it is made. 
    
      The elements of a contract are
    
    			Offer
    			Acceptance
    			Consideration.
    			(legal objective and legal ability to contract)
    
      Among other things,  there was no additional consideration 
    involved above and beyond the employment offered in the original
    oral contract,  (Pre-existing obligations can't be counted as
    consideration.) so it can be argued that a contract was
    not formed by the signing of the document if in fact a valid oral
    contract existed.
    
      The whole thing would hinge on 2 points:
    
    	1) Was there intent on the part of both parties to enter
    		an oral contract at that point? (Or was there specific 
    		agreement that the contract would be formalized
    		in writing?  )
    
       2)  Is such an oral contract valid?  (It may be covered by the
    		statute of frauds or something.)
              
      The answers to these 2 questions probably vary by state.
    
    						-al

    re: .19
    
>      The whole thing would hinge on 2 points:
    
    Add at least one more: was the person Eric spoke to authorized to 
    execute a contract on behalf of the corporation.

    re .19 & .20
    
    Add yet another...
    
    Did the (presumably written) job offer include a phrase saying
    something like "...employment commences... ...requires signing
    Digital's employee agreement..." or words to that effect?
    
    Mauritz
    

    Re .15:
    
    > Otherwise, I see no basis for your "unenforceable contract" thought. 
    > What difference does it make if you were already working when you
    > signed the contract?
    
    This is a part of contract law throughout the United States:  Even if
    something says it is a contract or agreement, and even if both parties
    agree to it, if it does not contain an _exchange_ of value, with each
    of the parties receiving something, then it is not an enforceable
    contract.
    
    
    				-- edp

    Re .20:

    Or more precisely, did Digital permit the person to appear to represent
    the company to the extent of offering an employment contract?  It was a
    Personnel representative who told me about the job offer, said there
    was no contract to sign, and signed the written offer letter.  Since I
    was not expecting a vice president or other "officer of the
    corporation" to welcome me personally, I would have to conclude that
    the Personnel Department is empowered to hire people.


    				-- edp

    RE:    <<< Note 1655.19 by MUDHWK::LAWLER "Not turning 39..." >>>
    
    >    Because (EDP's assertion is) that the contract was formed at
    >the acceptance of the Verbal offer.   One cannot unilaterally
    >alter the terms of a contract after it is made. 
    
         I disagree that it was unilateral, IF he signed the agreement.
    
    >  Among other things,  there was no additional consideration 
    >involved above and beyond the employment offered in the original
    >oral contract,  (Pre-existing obligations can't be counted as
    >consideration.) so it can be argued that a contract was
    >not formed by the signing of the document if in fact a valid oral
    >contract existed.
    
         True.  No additional consideration was involved.  So he could have
    refused to sign the agreement and taken his chances in court to retain
    the job, BUT I strongly disagree with the assertion that an oral contract 
    (if indeed there was one) cannot be modified by the person signing a 
    document after the earlier conversation had taken place.
    
                                     Greg