what to do with a patent under patent.
and patent refused
and patent stolen by the guy who heard the patent next to him.
I work in Electronics and design and can perhaps offer some advice. I am really sorry to hear what happened to your friend.
Typically when we want to discuss anything we sign NDA’s (Non disclosure agreements), basically they say I promise not to disclose or use your stuff without permission and you’ll do the same.
Now you didn’t sign one of these, so the company is under no obligation to actually give your friend a thing. However, if they really did do this, it is quite likely the senior management is not aware of it. It could be the person who interviewed your friend took credit for the idea themselves.
Also know, in any company we have concept designs coming out of our ears. Is he really so sure they didn’t think of something similar by themselves? You know if you work in a certain field of electronics, you spend a lot of time thinking on every which way to do something.
What does your friend want to actually get?
I’m afraid you are SOL in Taiwan. If this had happened in the U.S. or other country that enforces trade secret law, you would have a chance SO LONG AS your powerpoint (ideally every slide) bore a CONFIDENTIAL legend. The number one rule in trade secrets law is that the material must ALWAYS be treated as confidential. If you present material without confidential legends and without at least an oral statement, “my presentation is confidential” (ideally, captured with a digital voice recorder), you are giving it away.
I don’t think Taiwan even has a statutory trade secrets law. When TSMC sued SMIC in a famous trade secrets case (SMIC hired over 100 TSMC employees and pumped them for info), they did so in California. Therefore, if the product is sold in the U.S. or other country in which trade secrets law is enforced, and you can show the required legends or statements, and damages in that country, you might have a case outside Taiwan.
DISCLAIMER: This is not legal advice. Do not rely on it. It’s a flob opinion.
Same disclaimer: this is only a flob opinion and not legal advice.
I agree you’re probably SOL, sorry. It’s definitely not a trade secret, because to qualify as a trade secret it must be valuable sensitive informatoin (which can be satisfied here) and one must use great caution to protect the confidentiality of the information (which cannot be satisfied), such as by locking it in a secure place, limiting the people with access to it, having such people sign confidentiality agreements, etc. If one willingly shares sensitive information with a room full of total strangers, one is not taking the most basic precautions required for it to qualify as a trade secret, so it almost certainly won’t be protected as such.
I also agree that an NDA would’ve been the proper protection. Of course, an NDA states that the persons to whom the information is being disclosed may not pass it on to any person except perhaps “those who need to know in connection with the purpose of the NDA” or other limited exceptions. Additionally, an NDA ordinarily states that you are disclosing X types of informatoin for Y purpose and it may only be used for Y purpose and not for any other purpose including a competing business. And the NDA would state what law applies (eg., Taiwan, California, etc.) and how disputes will be resolved (eg., arbitration in Taipei, litigation in San Jose, etc.).
I can understand why you didn’t require an NDA, because you were just going for a job interview, not on a product sales pitch. But, you took a huge risk by revealing informatoin there that you considered highly valuable and sensitive, which was totally lacking in legal protection – especially in Asia, where stealing of ideas is rampant.
Oh well, no use crying over spilt milk. I guess all you can do is try to make the most of it. First, lesson learned: never disclose such types of info again in the future without adequate prior protection. Second: are you absolutely certain you can’t still land a job with them? I know you’re pissed off at what they did, but if they really did steal your idea and take it to production, they must have great respect for your thinking. If you can suppress your anger and transform it, can you approach them further (make sure you go high enough, to the right person) explain again that YOU presented that idea (send brief evidence) and they fully developed it, that you are constantly full of new ideas, and you’d appreciate the opportunity to develop additional product ideas for them. Take many deep breaths before communicating with them to be sure you’re projecting a proper, constructive attitude and not one of anger, resentment and entitlement, which would obviously turn them off.
Anyway, sorry about that. Good luck to you.
I’m a product developer. I just got off the plane this morning from a business trip to the U.S. where I landed several major product development projects with a large corporation.
First, your idea is already public domain available for use by anyone because you published it more than a year ago in graduate school. Rule of thumb is you have to apply for a patent on a concept within a year of publicly disclosing it/offering it for sale. The good news though is that if ASUS is attempting to patent the idea you can contest their patent(s) unless they can provide documentary proof that they conceived the idea prior to when you did in graduate school and/or you can prove if required that it’s already public domain. I would seriously look into this option as it could provide you with some leverage with ASUS.
Second, your chances of getting a corporation to sign an NDA before pitching an idea to them are practically nil. More likely, they’ll require you to sign a disclosure form exempting them from any obligations to you whatsoever as a result of you disclosing your idea to them. The only professional way to disclose a marketable idea is to walk into any meeting with a patent already in hand.
Third, even if you do have a patent it’s common for companies to steal your idea anyway if you’re a little guy because they’ll dare you to come up with the considerable resources required to defend your patent. This sort of blatant piracy even regularly occurs corporation-to-corporation. I have personal experience as a plaintiff in this regard.
Fourth, from long experience, I never do product development business with any company in Asia, only U.S. and European companies. This is because, in general, the business culture in Asia doesn’t respect and reward intellectual property development. There are exceptions to this rule but it’s not worth the time and effort to find out who these exceptions are and by the time you do find out it’s too late to back out.
Fifth, even in the mature intellectual property climates of the U.S. and Europe, as a little guy, your product development agreements are really only as good as the persons you’re dealing with on the other side, whether they possess personal integrity. My advice here is to get to know your decision-making counterparts in any corporation on a personal basis before doing any product development for them.
Bottom line is you screwed up due to inexperience. You essentially gave your idea to ASUS to do with whatever they pleased and your only leverage is to contest the validity of any patents they might apply for. I would get a lawyer’s specific advice on how to go about doing this though to avoid getting in over your head.
Outside the U.S., a public disclosure sufficient for one skilled in the art to make and use an invention destroys patentability on the day of dislosure (i.e., no “grace” period). Some countries have very narrow exceptions, e.g., a 6 month grace period if disclosed at a government sponsored conference (Japan), but I would never advise a client to rely on a grace period. File a provisional app, then make the disclosure.
Outside the U.S., a public disclosure sufficient for one skilled in the art to make and use an invention destroys patentability on the day of dislosure (i.e., no “grace” period). Some countries have very narrow exceptions, e.g., a 6 month grace period if disclosed at a government sponsored conference (Japan), but I would never advise a client to rely on a grace period. File a provisional app, then make the disclosure.[/quote]
Thank you for the clarification. Grace periods by country . . .
Write a letter to your POC at ASUS that lists the disclosures you made, and suggest that you have improvements that you would like to discuss, and ask for a reply. If he replies without contradicting your assertions, I would be happy. ASUS will never IMO expressly acknowledge that the idea come from you.
I had another question in mind. Since I know I cna’t do anythign about it now, I am wondering if there is a possible way to get some kind of paper stating “this is his idea before ASUS made it.”
Well, I’m not sure if this is what the paper is about, but what I want to stay away from is seeing big/small companies I applied for reject me because they think I stole something from another big company to get into another big company (cheating to get in)… you know what I mean?
- Will this actually happen? If so, how can I prevent it in my case? Can I get a statment from ASUS (which I feel even though I ask them for it, they won’t give anything)…
- Would it be good to say to a company I interview for that “this idea was originally mine, presented to ASUS in 2008, and they took the idea to make a product under their brand in 2009” to a different company that does electronics like them, say Acer for instance? Will this other big company understand this situation well, and still give me chance to enter their company?[/quote]
You’re only going to hurt yourself by bringing up your conflict with ASUS as it will make you look like a conflict-prone (Western) careerist rather than a team player focused on the job of creating value for your employer. Just present your product design and make it clear when you developed and – if they even connect the dots – let them figure out the rest for themselves.
Oddly enough, as one who worked for two years in a Taiwan high-tech company’s R&D division, I’ve found that being an innovator isn’t particularly high on the list of qualities companies here are looking for in an engineer. Number one they seem to value educational credentials. Number two, high-level technical skills. Three, a portfolio of successful products. Oftentimes advocating innovation seemed to be regarded more as unnecessary risk-taking rather than an opportunity to get ahead of the pack. In other words, I came to believe that Taiwan business culture has very little appetite for being the first to do anything. It would much rather be among the first to commercialize something after the risks were apparent.
Tech companies in Japan and Taiwan (the markets in which I have in-depth personal experience) fall into two broad categories: leaders and followers. For decades, Matsushita (Panasonic/National/JVC), Hitachi, and Toshiba were primarily followers of Sony innovations in consumer electronics and IT, while Fujitsu was out on its own planet (some real pioneering stuff, like FM Towns multimedia, that was just too far ahead of the market).
In Taiwan, a similar division. In my book, ASUStek has become a leader with its decision to build its own brand and the phenomenal success of its netbook initiative.
The letter I’m suggesting is not confrontational. The OP asked for some way he could document his invention. I don’t see many options after the fact.
Any designer or inventor should keep a lab notebook, with serially numbered pages that cannot be removed or inserted with removal/insertion being apparent. Document your ideas and get the notebook periodically notarized.
[quote=“daikih”]That’s an interesting fact. I actually thought they liked innovation or something new to the world. The company I worked for before was a “trend follower” and few other company did mention about they want “more productivity…” so perhaps I looked at things the wrong way in that area. I think you’re right about that and I feel the same after you talked here a bit, not that I’m saying Taiwan isn’t doing anything innovative.
Thanks for the advice[/quote]
You’re welcome. I hope I helped. If it’s a fact that ASUS lifted your idea – and that appears to be the case – then you have an obligation to yourself and to your profession to see that they aren’t able to patent the idea. Since your idea was developed in graduate school it may not be visible to patent examiners searching for prior art so you may need to be proactive in that regard. I’d have a patent attorney review the facts of your case and ask him or her to draft a letter to ASUS setting out your position rather than doing it yourself. He/she would also be able to suggest some possible options for compensation.
Just to add to Spook’s advice which I think is pretty spot on, and the usual disclaimer which is to say this is only my personal opinion.
With the substance now know to be concept design. Spook is right, no company I know will enter an NDA for this purpose, its just asking for legal complications and uncertainties we dont need, over the years I have had many such requests and have yet to accept any.
Having said that to even qualify for a patent is not as easy as it seems (and then once you get it , it still needs to be protected if challenged). The product you proposed looks really cool I’ll give you that, but all the existing technology is already in the market. touch screens, ebooks, computers, vertical-horizontal orientation and so on . It would be very hard in my opinion to say you have anything that qualifies as patentable material in your design. Followed by the costs of trying to enforce any patent you feel might be deserving would be extremely costly.
I also agree with the fact that now they have publicly announced the design concept came from wepc, even if management were previously unaware and are now made aware, the potential bad publicity of an acknowledgment they in effect stole the idea, puts them in a difficult position. I would be interested to hear the response you get.
I had been wondering exactly what position was being sought. It seemed likely perhaps Project manager, but such a position usually requires many more tasks than simply sitting around coming up with ideas. Co-ordinating mechanical design, ID designers, electrical engineers, purchasing , factory and so on. Such a position typically requires good native language ability. This would be in addition to an expert level of knowledge in related field.
Some companies like AT&T have departments dedicated to the human factor, for example around something as simple as a button they will have done studies on the max and min size, what the ideal distance between buttons is, the amount of pressure to activate it, and what material feels best, the distance travelled and the amount of return force. Which all will be measured in the final product. But again this is much more than just concept design.
Going back to protecting your IP. concept design would be the most difficult as a minor change here and there and it is next to impossible to challenge anywhere. You see this all the time on products already on the market, developed by companies as large as Apple and products as well known as an iPod, yet do a search, virtually identical designs exist, not only in style but also function.
Again, to say, and while your idea seems to be one which was used. Ideas are floated around everyday, entire departments are putting forward ideas, Product/Marketing/Sales/Engineering. There will be feedback from trade shows where distributes provide a non stop string of ideas, as well as end users. Seriously, concept designs are in such high numbers, its not unusual that a single product idea will have been put forward a dozen times from different sources.
To completely invalidate and patentable claim you may have they only need show evidence of any idea predating your interview, either internally or from any other source. That would be if you could actually find anything you could patent in the first place and afford to protect. Add to that you disclosed this to them quite freely, with no restricting contract in place.
(sorry, I wasn’t able to access your files to compare for myself)
[quote]Kaizen is a Japanese word meaning, roughly, continuous improvement. It is one of a batch of oriental ideas seized upon by western companies in the 1980s when it was thought that Japan was the source of most wisdom about management. . . .
Kaizen has also been translated as “refinement”, the process by which a rough diamond gradually gets smoothed into a high-quality gemstone. In Japanese culture, the idea of refinement has a particular significance. It is not, for example, considered to be copying to take someone else’s idea and then to refine it for yourself. It is considered more like a celebration of your environment. . . . [/quote]