Jon,

Interesting story, I know of yet another similar story, but which has a much
different outcome.

Back in the 70's, a very good friend of mine, John Scott Campbell, who is a
joint inventor on my Patent, and who also had been a Professor of Mechanical
Engineering at the California Institute of Technology here in Pasadena,
introduced me to a very good friend of his, Ed Simmons, who has also been a
Professor at Cal Tech.

Ed Simmons is and was a legend, and a real eccentric character, and known by
many, especially around Cal Tech. He could be spotted walking all over
Pasadena wearing nothing but a sweater or sweatshirt, a pair of colorful
tights, sandals, and a beret.

John told me the story behind Professor Ed Simmons and Cal Tech.

I am not quite sure what Ed's discipline was while he was teaching at Cal
Tech, and I am not exactly sure when this happened, whether it was in the
40's or 50's or even later (John retired in 1953), but Ed had signed the
customary "Assignment Agreement" which said that anything that he invented
and Patented during his employment would be assigned to the California
Institute of Technology.

Well, Ed invented this little gizmo thingie, and he dutifully took it to the
Patent Board (I think that's what John called it) at Cal Tech, and they
immediately decided in their infinite wisdom that the little gizmo thingie
was totally worthless and proclaimed that they did not want to waste any
time or money on it or to Patent it or have it assigned to them since it was
totally worthless anyway.

Ed said OK, fine, since you consider my little gizmo thingie totally
worthless, and since  you don't want it, then will you please release it to
me, so that I can try and pursue it on my own.

Cal Tech said sure, OK, and released it to Ed.

Ed applied for a Patent on his little gizmo thingie, and was awarded the
Patent in his own name, without having to assign it to Cal Tech.

Cal Tech had a change of heart, and decided that Ed's little gizmo thingie
may not have been so worthless after all, and they took him to court to try
and force him to assign it to them per his original "Assignment Agreement".
Fortunately for Ed, the court ruled in his favor and said that Cal Tech had
had there chance, and that they had considered it worthless, and that they
didn't want to do anything with the little gizmo thingie, and that they had
released it to Ed, and that the Patent therefore belonged totally and
completely to Ed, and that Cal Tech had no right in it whatsoever.

Well, the worthless little gizmo thingie that Professor Ed Simmons had
invented and Patented while he was teaching at Cal Tech was nothing less
than the Resistance Strain Gauge.

That Patent on the original Resistance Strain Gauge allowed Ed Simmons to
retire and live very comfortably for the rest of his life. I am not quite
sure how old Ed is now, or if he is still with us, or still walking around
Pasadena as I write this, but I did see him walking down Colorado Blvd near
one of his favorite haunts, C & H Surplus, as recently as just about a year
ago.

If I remember correctly, Abd ul-Rahman Lomax of our little group here, went
to Cal Tech, and possibly he has seen or met Ed and knows some more about
him and his Resistance Strain Gauge.

I also have some very personal experience along this line, having spent over
two years before Judge Julius Title, in Law and Motion, in the Los Angeles
Superior Court, in litigation with Faxon Communications Corporation, who was
attempting to force me to assign my rights to my Patent (mentioned above) to
them. Ultimately, the case was never scheduled for trial, and was finally
dismissed after being unresolved and unsettled for over five years. Yes, I
managed to keep my ownership of my rights as a joint inventor of the Patent,
but in the end, the useful life of the technology yielded to the digital age
of the microprocessor (this was back in about 1976 thru about 1982). But
this is a story for another time.

One other point that is germane to the issue, especially here in California,
is that the State of California has actually enacted a provision in the
State Labor Code that specifically deals with the question of "Assignment
Agreements" between Employers and Employees, and is very liberal in favor of
the Employee, since it specifically deals with and covers such things as
whether or not something is within the scope of employment or business, and
whose facilities and time were or were not used in development, etc., etc..

I am really surprised with the outcome of your example story in the paper
below, especially since it appears that he actually got a release. There may
have been some other mitigating factors to the story.

Many agreements today cover not just inventions, but also cover many other
things, such as specifically limiting activities in the same field for a
specified time after employment, or require maintaining confidentiality
indefinitely on certain things, or non competition clauses, or similar
things. Some of these things may have applied to the story in the paper that
you mention below.

I myself have no problems with most of these "Agreements", since I believe
that if am being paid to think for someone, the product of my thoughts is
part and parcel of the service I am performing. By the same token, If I am
not being paid to think, what I think of is mine.

JaMi


----- Original Message -----
From: "Jon Elson" <[EMAIL PROTECTED]>
To: "Protel EDA Forum" <[EMAIL PROTECTED]>
Sent: Friday, September 05, 2003 4:13 PM
Subject: Re: [PEDA] License Legalities


~ ~ ~

> Yeah, there was a real nice story in the paper last year, I think.  A
> guy who worked
> for Alcatel came up with an idea.  He ran it by the corporate powers,
> and they
> had no interest in the idea, and I believe he got that in writing.  He
> quit, and
> developed the product to the point that he started selling it, or at
> least showing
> it to potential customers.  He is now a legal slave of Alcatel,
> developing the product
> and doing custom modifications for free.  He expects to be required to
> support the product
> for free for the life of the product, unless his lawyers can find a way
> to break the
> terms of the agreement he apparently signed.  If he fails to continue to
> work on this,
> they apparently can jail him on contempt of court charges.  I think they
> also have
> a requirement that he take no other job for the duration of this.  If I
> recall correctly,
> this is going on in Texas.  The product WAS very related to his work,
> and the business
> of Alcatel, which certainly clouds the picture.  I think Alcatel would
> be totally
> justified to enforce some of the terms of the usual non-compete
> agreements and
> trade secret protection, and could make him work (as an employee) of
> Alcatel,
> or make him take the product off the market.  Even forcing him to turn
> over the
> entire product, and spend a certain amount of his own time documenting it
> and bringing Alcatel employees up to speed on it would be reasonable.
> But, this slavery business, with no end in sight, is just too much!
>



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