University Claims Copyright on Formula

Dear Rich: I am looking to license a copyright for a creative process -- a method of calculating something -- that was developed within a university. I developed my own formula and process for which a provisional patent application was filed. One of the developers developed the initial copyright with the university and now they are claiming a derivative work. We have agreed to a royalty rate from our technology but can not find an example to compare for a rate. The original copyright is maybe 1% of our overall new technology. Can you help me with a suggested fee?
Much as we'd like to help, we wouldn't know where to start. The fact that the original university innovation accounts for 1% of the overall technology is not a helpful indicator, especially if that innovation contributes more than 1% of its value. This is why intellectual property valuations are complex and typically managed by experts.
Copyright on process? Our other concern is that the university is claiming a copyright on a process. The Copyright Office states that "ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices" are all ineligible for copyright protection. At best you can copyright the description, explanation, or illustration, that is used in connection with the procedure or process. So, we're unclear as to how someone can assert a copyright claim over material that is not copyrightable. Normally, to stop someone from using a process or method, the owner would need a patent (or an obligation to maintain trade secrecy, if the process were a trade secret) not a copyright. In addition, the fact that the university process may not be protectable could affect the patentability of your formula (should you follow up with a patent application).
Maybe we're wrong ... Perhaps we are misinterpreting what's at stake - -for example, maybe you are referring to the use of software code protected under copyright. In any case, with so many factors in play -- the university, the developers, patents and copyrights -- we think you're best off consulting with an intellectual property attorney.

University Won't Patent My Invention

It looks like I may have made a scientific breakthrough with definite commercial applications. The thing is the university patent office (who would own the work) is reluctant to start paperwork on it as they say a few patents have already been filed using similar "terms" and applications. The thing is, those ideas have been proven NOT to actually work, whereas I now have good solid data proving my concept (not based on anyone else's work) is the one that will produce results. If someone files a patent for a process, but that process is flawed and does not work, does their patent still hold? It's like someone claiming they can build a faster-than-light spaceship, but never actually getting one to work. Then someone else succeeds, and the first party claims their original patent covers all faster-than-light work. We can imagine your frustration at having created something useful and then learning your superiors don't want to patent it. However, the decision seems to be out of your hands. We assume that as a university employee you signed some sort of pre-invention agreement under which you agree to assign all your university-related discoveries to the university. In that case, the university is free to do whatever it wants with your discovery (unless there's a provision in your agreement providing for reversion or buy-back rights).
Your faster than light scenario. In order to obtain a patent, the applicant must have a reason to believe that an invention will "work for its intended purpose." If that's not the case -- the spaceship can't travel faster than the speed of light -- then that can be the basis for attacking the patent's validity. (By the way, the USPTO does not test each patent's functionality.)

Micro-Entity Costs For Design Patent Filing

Dear Rich: If I am filing a design patent electronically, how do I know ahead of time what the fees are? I am a micro so does that mean $190.00 ($45 + 30 + 115)? Is that correct or will I find out a different number after I have uploaded my application. You can always calculate current micro-entity fees by using the USPTO fee schedule. And yes, your calculations are correct ($45 for basic filing fee, $30 for the search fee, and $115 for the examination fee).

Can I "Own" Yoga Method?

Dear Rich: I just read your answer about Bikram Yoga (yes, the one dating back in 2011, I'm a slow reader :) and I have a related question. I understand that Bikram Yoga cannot restrict competing brands from using heat in their studios. But what is the principle behind this ruling? (I am talking about the environment in which people practice yoga, not the actual postures). If I, for example, come up with the concept of FlowerYoga (not a real concept, by the way) which means that people will practice yoga surrounded by flowers, would I be able to "protect" this concept in any way? And would I be looking for a copyright agreement or a trademark?  The principle behind the Bikram decision is that copyright law -- which protects manifestations of ideas such as writings, images, recordings, films and software -- will not protect methods or processes. Trademark law -- which protects names, logos and packaging used by businesses -- will not protect anything "functional." So a company like Bikram can use trademark law to stop others from using its name, and it can use copyright law to stop others from reproducing its books, brochures and videos. But it can't use trademark or copyright law to stop others from offering a sweaty yoga class (or other possible deviations on yoga piracy).
What about patent law? A patent is granted for a novel process or device that is not obvious to people who are skilled in the field. Although there's little novelty in spreading carnations or turning up the thermostat, some inventions associated with yoga can acquire patent protection. If you seek to patent a yoga method, keep in mind that there's the possibility of bad press, as well as high patent fees and enforcement costs.

Can Joint Owner Assign All Patent Rights?

Dear Rich: In your first edition of your book, License Your Invention, you state in Chapter 4, "When there are joint owners, all of the owners must consent to an assignment of all rights to the invention. That is, none of the owners can give up all rights to the invention without obtaining agreement from the other owners."Please tell me where I can get background information about this statement. I have not been able to find this in Title 35 of the United States Code. Joint owners of patents can do some pretty crazy stuff -- they can license the patent without the consent of the other joint owners and without paying them either. But an assignment, unlike a license, is a permanent transfer of ownership. It's an outright sale of the patent, and for that reason, a joint owner can only assign his or her interest. As stated in 37 C.F.R. 3.1 (Definitions: Assignment)

Each individual inventor may only assign the interest he or she holds; thus, assignment by one joint inventor renders the assignee a partial assignee. A partial assignee likewise may only assign the interest it holds; thus, assignment by a partial assignee renders a subsequent assignee a partial assignee. All parties having any portion of the ownership in the patent property must act together as a composite entity in patent matters before the Office.

If it were any other way, any joint owner could easily "steal" the rights of his co-owners depriving them of any possibility of revenue. There is even case law prohibiting joint owners from granting exclusive licenses (rights that exclude other inventors from licensing) without the consent of all owners. Of course, joint owners can contradict these rules by a written agreement.
PS Dept. Your edition of our book may not be current (it's about 20 years old). The current version is entitled Profit From Your Idea: How to Make Smart Licensing Deals.

Wants to Protect Music Method

Dear Rich: I'm contacting you regarding IP patents for a product I have recently put into commercial format. What I am trying to protect is a unique pedagogical approach involving music and language. There is currently no commercial product that uses this system. I have used and developed my unique method over the last ten years After some research, my understanding is that I have a year to determine whether my product is commercially viable after applying for a provisional patent which I did this month. My question is: What constitutes evidence that a product is commercially viable in order to become eligible for a regular patent? I have been using the IP for the past 10 years and it is my primary source of income. Now that I have it in product format (an audio instructional CD for acquiring a creative skill) I would like to know how I can document the commercial use of it. Is it just through sales of the product? If so, how much constitutes viability? Can I use the classes that I teach using this IP as evidence of commercial viability? We're glad you're making money from your concept and we'd like to see you continue to do so. However, we're not sure there is a patent in your future. That's because the USPTO won't grant patents if the subject of an application has been publicly disclosed by an inventor more than one year prior to filing a patent application. If you've been using this method to teach for ten years, that would probably be a disqualifying public disclosure.
Determining commercial viability. Although we recommend determining commercial viability before filing a patent application -- it can save you thousands in fees -- it's not a prerequisite for patent protection. There are many ways to assess commercial viability for an innovation and in his book, Patent It Yourself, David Pressman lists over 60 factors that can make a difference such as cost, ease of use, ease of production, durability, convenience, novelty, etc.  Many of these innovation factors may not be applicable to a music-teaching system and you can probably get a relatively reasonable perspective by reviewing the music-teaching systems industry -- that is, the sale of instructional book, CDs, DVDs and apps. If you have the funds to have someone else review an innovation, two independent invention evaluation services considered reputable by Pressman are: the Wisconsin Innovation Service Center, and the I2 Innovation Institute. Otherwise, avoid invention promotion scams.

Copyright and Trademark. You can't stop others from using your publicly disclosed ideas but you can stop others from copying the way you express those ideas using copyright law -- for example, your books and CDs on the subject. And, if you can register the name of your system as a trademark, you can prevent others from using a similar name. You can't stop others from discussing the underlying principles of your method as we wrote about in a recent post.

Wants to Protect Magnetic Jewelry

Dear Rich:  I'm looking to launch a jewelry line with modular magnetic pieces, where the owner can switch between different colors and designs for the same piece of jewelry. What I want to protect is not just one piece, but the entire magnetic mechanism at play. Does that qualify as "functional" and merit a design patent? Alternatively, if I file a copyright, could I then only pursue someone if they use that mechanism AND their jewelry is a copy of mine, or could I pursue as long as the mechanism is the same (even if their jewelry looks different)? Your copyright on your jewelry would not extend to any of its functional (magnetic mechanism) features. (Ditto if you were to obtain a trademark registration for the trade dress or brand name of jewelry.) The ways to protect functional features of your jewelry are as a utility patent (not a design patent) or to maintain the process as a trade secret (which seems like a challenge).
Utility patents. There are several patents for inventions involving magnets and jewelry. Here's a 2012 patent (Patent No. 8,209,824) for a magnetic clasp. Here's a 2003 patent (Patent No. 6,594,87) that provides for magnetic arrangement of jewelry elements. If you want to pursue a utility patent, your first step is to review the prior art for patents such as these and determine whether (1) your invention infringes any valid patents, and if not whether (2) your invention is novel and nonobvious. The second step is to determine whether your invention is commercial -- are the potential profits worth the potential patent costs? Also, keep in mind that a patent will take approximately two years to obtain and during that pendency period you can't stop those who copy the invention.

Who Owns Lighting Invention?

Dear Rich: I am an engineer employed by a large corporation that owns multiple businesses and often buys new businesses and sells them off depending on market conditions, etc. Over the past couple of years, I had been designing and experimenting with electrical circuits related to commercial lighting. Until recently my employer was not in this business but then recently purchased a lighting company. I was working on this stuff before my employer purchased the lighting company, and also, I do not work on lighting designs for my employer—the lighting business is in another state. I also have no contact with the lighting business whatsoever because I design electronics for the a different industry. When they hired me, I was asked to sign a bunch of documents, basically signing off all my patent and copyrights. One of the documents went as far as to say that I was not allowed to consult on my free time. A few years ago I asked our HR department for a copy of the documents I signed. The only thing they came up with was a statement saying that if I used my employer’s equipment to design something, they would claim the IP. They then asked me to resign a similar document. I never did this and they never pressed the issue. As a very general rule, if you developed the innovation (1) on your own time, (2) using your own tools, and (3) at the time of innovation, your employer wasn't engaged in the industry of the innovation (or likely to be), you will probably retain rights (4) in the absence of agreements to the contrary. Employee ownership of inventions is governed by state laws, most of which are influenced in varying degrees by whether you signed any documents agreeing to transfer ownership of inventions (known as pre-invention assignments), whether you used employer information, time, or tools in developing your innovation, whether you were hired to invent and whether the invention is related to the employer’s business or actual or “demonstrably anticipated” research or development.
Things to consider ... The fact that the HR department can't furnish you with agreements doesn't mean they don't exist. It's possible, for example, that general counsel or outside counsel have retained copies. If there is a legal dispute, chances are good that -- if the documents exist -- they'll be "found." Your written agreement trumps any other arrangement you may have with your employer. However, if the agreement goes too far -- for example, claims rights to all future innovations even when you're not working for the employer -- you may be able to challenge it (unfortunately, you'll have to do that in court). At the same time, you may complicate your situation if your innovation has some application within the employer's (non-lighting) industry, even if it's not a direct application. If there is any evidence that employer tools were involved in your innovation -- even in the absence of written agreement -- the employer might obtain an implied license known as a shop right. BTW, some states -- Delaware, North Carolina, Utah, California, Illinois, Kansas, Minnesota and Washington -- require that the employer furnish a copy of the law on pre-invention assignments to new employees.
The real world ... Your biggest concern may be if a company wants to license your innovation. That company will not want to enter into a license agreement if they believe there is a dispute as to your ownership, or alternatively, if they believe you may have used employer trade secrets in your innovation. You will most likely be asked to include an indemnity provision.
What's an inventor to do? We're sorry to have to tell you this ... but if you're interested in patenting, commercializing or licensing your innovations you will need the advice of an attorney. Unfortunately, there are too many unknown and wild cards to predict the outcome.

What's the Right Patent Royalty?

Dear Rich: I have a patent pending product line. The patent was filed in January, 2011. A company has approached me and showed interest in licensing the technology. I had them sign an NDA. I shared all the info, production sheets, gave them actual samples, provided them with copies of my marketing material, approved their production sample. They want to use my three trademarks, as I am considered an expert in this particular technology. All of a sudden they are telling me that they want to produce the product, use my trademarks, but pay the royalty only once the patent is issued. I know that royalties are up to 8%. I like your approach of a tiered royalty. Although my products are still patent pending, and they want to use three of my trademarks, I feel a 5% royalty is what I should ask for. What do you think? Choosing the right royalty is a business decision, not a legal one, so we leave that one up to you. As for the rest of it, here's some info that may point you in the right direction.
The trademark licenses. When a company wants to license trademarks and patents, it's not unreasonable to set separate royalty rates for the trademarks. That way, if the trademark goodwill outlives the life of the patent -- for example, as with a product such as Scotchgard -- the trademark owner will still receive revenues, despite the lack of patent protection.
Two tiers.  In previous entries and in our licensing book, we have suggested a two-tiered royalty for patent-pending products: one rate if the invention acquires patent protection; the other rate if the USPTO won't issue a patent. This often works when a product's success is tied to a first-to-market strategy.
Will your NDA protect you?  If the company wants a single royalty -- they're saying that they will only license the product if the patent is granted -- then you need to re-group.  If the product doesn't get a patent and it still has commercial potential, can the company go ahead with production and cut you out of the picture? Will your NDA protect you if, during the patent process, your patent is published as typically happens after 18 month -- and it's no longer a trade secret? Does your NDA prohibit the company from selling your product if it doesn't enter into a licensing deal? These are issues where an attorney's analysis may prove helpful.

Bird Feeder: Patent or Copyright?

Dear Rich: I have a design for a bird feeder which hasn't been made by anyone else yet. I want to pitch the idea to a company but don't want them to steal my idea. Is a copyright on the design good enough to stop them, or should I apply for a patent? Copyright won't protect useful objects, so we don't think that would be the best choice (unless you want to stop others from copying your bird feeder's imagery). Instead, consider one of the following methods of protection:
Design patents. Inventors use design patents to protect the appearance or design of a functional object. Some examples of bird feeder design patents are this one and this one. Read more about design patents.
Utility patents. Inventors use utility patents to protect bird feeders with unique functional features -- for example, this squirrel-repelling feeder or this squirrel-repelling feeder or this squirrel-repelling feeder (whoa that's a lot of repelled squirrels). Read more about utility patents. (Also you can preserve your place in line at that Patent Office without filing a full patent application by filing a provisional patent application.
Trade secret. Some inventors seek to protect their rights when submitting ideas by using nondisclosure agreements (NDAs), thereby preserving trade secrets. The problem for inventors is that often the evaluating company won't sign the NDA because of concerns that they'll be precluded from developing similar ideas. Read more about NDAs and trade secrets.

Can I File Foreign Patent Application in English?

Dear Rich: I want to file for foreign patent rights using a PCT application. I'm planning on applying in a few countries. Can I file in English?  Some of our readers may not know that a PCT filing refers to a procedure administered under The Patent Cooperation Treaty. Using the PCT process, you can file a patent application in the U.S. and then file a single “international application” (the “PCT application”) with the PCT Department of the USPTO that establishes a filing date for all member countries. This filing does not result in a universal PCT patent; the inventor must eventually file separate or “national” applications in each PCT jurisdiction.
Translations needed. According to the PCT rulebook, a translation of the international application must be furnished if the foreign patent office requires it. (Some countries permit you to choose from more than one language.) What's translated? The translation must include the description (including the title of the invention), the claims, and any text in the drawings. Normally the abstract must also be translated. Most countries don't require that the request itself be translated. Any foreign patent office that requires a translation of the request is obliged to furnish to the applicant–free of charge–a copy of the request form in the foreign language.

Doesn't Like His Patent Examiner

Dear Rich: I'm having a hard time with a patent examiner. I've tried to be reasonable but it seems like the examiner is just rejecting various claims because he can. What do I do if I'm stuck with a bum examiner? Most applicants or their attorneys bite the bullet and try to deal with the examiner as best they can. You can find advice on responding to unfavorable office actions in David Pressman's Patent It Yourself (Whatever you do, you don't fire off angry missives about the examiner's mental state because those can quickly go viral in the patent world.) If you get a final adverse ruling, you can appeal to the Patent Trial and Appeal Board (PTAB). You can browse past hearings or documents at the PTAB's site. If you're not happy with the PTAB's decision,  you can appeal to the Court of Appeals for the Federal Circuit located in Washington, D.C. By the way, a new site Reed Tech Patent Advisor advertises that, for a fee, it can provide you with a background analysis of any USPTO patent examiner including all kinds of info -- for example, the average time the examiner takes to issue a patent.

My Partner Patented My Idea!

Dear Rich: While I was in school, I came up with an idea for a product that allows you to get your car back from valet with a text message. I wrote a business proposal and found a partner. My partner started the company and we developed the product. I never signed any employment agreement, we never did any sort of paperwork for ownership of the company (he was a family friend), and he applied for the patent with his name and the company name. All was fine until a disagreement between us led to me leaving the company. Now he refuses to acknowledge my claim to the company (though I have him acknowledging my co-ownership in an email), and his name is on the patent for my idea. Obviously I learned my lesson about getting everything in writing, but do I have any recourse as far as challenging or becoming a co-owner? We're not clear whether your patent was granted or whether you're referring to an application still in progress. We're also not patent lawyers so we can't comment on the novelty or nonobviousness of your text message/valet system. But few applications fly through the patent process, so if a patent has not been granted (and we're not referring to provisional patent applications), we'd suggest that you search the USPTO website to determine where, in the patent food chain, the patent is currently located and to verify that you are not listed as a co-inventor. You need to also assess accurately what your contribution was. The more specific and detailed your contribution the stronger your position. But if all you provided was the one-sentence idea as in the question, above, the weaker your claim to invention co-ownership.
Can you afford the fight? Assuming you have a strong claim, you're going to need a patent attorney in order to validate your claim to co-ownership. (You'll need a patent attorney because you will need someone familiar with the the patent process and with claims such as patent fraud.) It's possible (though not likely), that if you have a really strong financial claim, you can find an attorney who will work on contingency. Before you proceed, consider the financial outcome. You don't want to spend more money on lawyers than you'll earn from your patent.

Sorry, You Can't Patent Cartoon Characters

Dear Rich: I would love to know more about patent drawing requirements. Well, first off my drawing in this case are cartoons characters which I would love to share around the internet but I am afraid that it will be easily stolen. Is it possible to patent cartoons for example, Mickey Mouse? If yes what should I do to achieve such actions and what documents are required? I'm interested in starting an online comic and my further plan is to sell some small merchandise into the market and therefore I will need such protection. We think you misunderstand the purpose of patent drawings. They're technical illustrations that explain how to make and use a patented innovation. So, they're not the right choice for protecting a cartoon character.*
How do most cartoonists protect their creations? Most cartoon characters are protected under copyright and trademark law (not patent law). Even though copyright is free and automatic, we still recommend copyright registration (online $35). Read more about copyright protection and registration for protecting cartoons and comic strips. You can also acquire trademark protection for your character. That provides exclusive rights to the character name, logo, and image on certain goods and services. Read more about trademark law, here. Keep in mind, no matter what laws protect your character, you can't prevent others from stealing it. These legal protections give you the basis - assuming you can afford it --  to chase, sue and recover from the wrongdoers.
* That Said Dept. Although there's no way you can obtain a utility patent for a cartoon character (utility patents only protect functional inventions), you can file a design patent, if, for example, your character is incorporated into the design of a lamp base. It's probably overkill in your situation because of the costs involved for filings (particularly if you are seeking expedited treatment). Copyright and trademark laws should provide equivalent or better protection.

Has Idea for Book Bag Design

Dear Rich: I am 20 years old and I'm looking to get my idea patented. Which forms are needed for a book bag type design?  Are all the fees due at the same time the application is turned in or can I just pay the $125? And also, do I file a utility patent or just a design patent. I am still unclear to the distinctions. Young inventors are an inspiration. Did you know Louis Braille was 15 when he invented the reading system used by blind persons? And Chester Greenwood was 15 when he invented earmuffs. Frank Epperson was 11 when he invented the popsicle (originally called the Epsicle). And Charles Babbage was 19 when he invented the concept of a programmable computer!
Right, you had a question. As for your last question --  the distinction between utility and design patents -- we talked about this in a recent post. Basically, if you're trying to protect something functional (like the massaging book bag on the left), seek a utility patent. If you're trying to protect appearances, like this combo vest/book bag, seek a design patent.
What forms are needed? Filing for a patent requires more than filling out forms and in most cases -- particularly for utility patents  -- requires the assistance of an attorney. You can read more about design patents here, and more about utility patents here. You can find patent forms at the USPTO website.
The fees. An applicant for a utility or design patent pays some fees when filing, others during the examination process, and more when the patent issues. If you are filing a provisional patent application and you qualify as a small entity, there is a one-time fee of $125 (soon to be $130) and if you qualify as a micro-entity after March 19, the one-time fee is $65. You can find more patent fees at the USPTO website.

Wants to Make Ric Rac Taggies

Dear Rich: I want to make a taggie for a friend and know people will see it and want one. I am aware of the legal issues on looped ribbon. Can I use textured ribbon and Ric Rac? I have ribbon which has "handmade with love" on it. Can I put the ribbon corner to corner diagonally? Is this allowed? I want to add texture to a normal square-shaped one and add a squeak to the shapes cut from a slice fabrique. Can you tell me if this is ok? Is it okay to use fleece? I need help so I am not breaching copywright issues. We're always excited to learn about popular crafts items, especially ones that we know nothing about ... Wait a sec ... we do know something about Taggies! We  wrote about them in a previous entry.
We can't really help. Because of the patent issued for Taggies, we really couldn't tell you whether you can get away with any of your plans but we have a feeling that if the Taggies Corporation learns of your proposed uses they'll ask you to stop no matter what you're doing. Of course, that's if they learn about your versions. If you avoid using the term, Taggies, you're unlikely to show up on their radar, particularly if you're just making the item for friends. Also, we know we have altered the grammar for much of your question and we hope that's okay -- our staff is a stickler for grammar and if anyone needs a grammar refresher we recommend this new book. (And we would also remind you -- in the gentlest of ways -- that there is no "w" in copyright.)

POST #1000!!!! 

Should I Patent My Clothing Idea?

Pat No. 4,151,613
A protective device for the buttocks and hips
 of a person for use in skateboarding

Dear Rich: There is sport-specific clothing, padded bike shorts, fishing vests, etc. I have an idea to use a specific aspect of one sport-specific clothing item and apply it to a different sport-specific clothing item. I think it would qualify for a design patent, since I would be merging two clothing aspects that have not been used together before. My question is whether it might qualify for a utility patent since the clothing item is "used" in the sport.  We understand your desire not to disclose your invention (and BTW -- after March 16, nondisclosures make even more sense). But because we don't know what your sports-related invention is, we can't really advise whether a utility or design patent is appropriate. The main guideline is that if your innovation does something (other than looking cool), you're in the world of utility patents. If your innovation primarily enhances the appearance, then you're in the world of design patents. That doesn't mean you'll qualify for the respective patents -- there's plenty of deets to deal with. But that's how you start your analysis.

Who Owns Employee-Created Invention

Dear Rich: This is a question related to the ownership of the invention between the employer and employee. I was employed by a company and I created an invention at work. The product that I invented was not related to any company business nor did I design the product using any knowledge that I acquired from the job; I just used the computer at work. In its program guidelines, the company said that if the invention was company business related, the company own the right although if the company was not interested in pursuing, it would release it and give the right back to the employee. If the project was not related to the company business, but the company was interested, then it would negotiate with the employee as to how two parties work together. If it was not interested, then the employee was free to do whatever he wanted.The employment agreement did say that if the employee uses any company resource to create anything, the company owns the rights. I left the company shortly after and a few months later, the company came back and proposed that we jointly submit the invention to a large corporation. They did not want to put any money in patenting. Without IP protection, I was not willing to go along. I told the company that I wanted to pursue the invention further on my own. A few days later, I received two documents that I requested --  a signed NDA and a letter of release, stating that I am the sole legal owner of the invention and that the company will not claim any legal right in the future: Is it safe for me to say that I now truly own the legal right of my invention (if I get the patent)? It seems that the guideline somewhat contradicts the terms in the employment agreement. My assumption is that the letter release should override the employment agreement.
Long Question; Short Answer Dept. You need to see an IP attorney. We believe the letter granting all rights will trump prior agreements but we couldn't say for sure without looking at the papers. If you're still interested in patenting the invention, you need to confirm your ownership and you also need to check your deadlines particularly if the invention has been disclosed or published. Here's a collection of articles that may help you sort out ownership issues and here's a previous entry relevant for California inventor-employees.
BTW, speaking of inventors, today (actually yesterday) marks the one-year anniversary of the America Invents Act and seven provisions of the AIA go into effect: inventor's oath or declaration; preissuance submissions; supplemental examination; citation of patent owner claim scope statements; post grant review; inter partes review; and covered business method review. Read more about it at our AIA timeline.

Google's Prior Art Button

Google announced a new feature for their patent search tools. It's a button that appears on the pages of certain patents. Clicking the button triggers a search based on key terms from the patent. What's nice about the search is that it only retrieves documents from before the date that the patent was filed. This may prove helpful for inventors seeking out prior art. Check it out.

Should I File My Own Patent Application?

Dear Rich: I read the article about doing one's own patent application and not needing an attorney. I have an invention for a product that I know will generate great interest. It's a method for treating metal surfaces that greatly will improve material strength at high temperature applications. Based on the article I assume that once I obtain a patent I will not have to worry about enforcing the patent. I have read how so many issued patents become invalid or that a court determines that the application is not broad enough to cover all aspects of the invention. I assume that cannot happen if as you say the patent office will help me with my claims. Is that correct? In the meantime, based on the legal advice I have read on your site I will prepare and file my application and save on legal fees. Assuming that this is the article to which you refer, the following info may help you.
You will have to worry about enforcing your patent. Having a patent doesn't relieve you from the obligation of enforcing it, just the opposite. As this article (and as David Pressman explains in his book Patent it Yourself), a patent is merely a license to go after infringers. Unfortunately, you will have to finance that enforcement out of your own pocket.
Don't rely on the patent examiner for your claims. Patent examiners have an obligation to assist applicants and the article includes two first-person accounts: one in which the applicant dissed the competency of the examiner; and the other in which the applicant was assisted in claims drafting by the examiner. (You can probably find many other comments about patent examiners by trolling the web or reviewing sites such as bustpatents.com.) In any case, though examiners can and may assist, you should draft and understand your claims before and after any modifications by the examiner. It would be best if you can have your patent claims reviewed by a patent expert (although practically, most patent attorneys will want to review the whole thing).
No matter who drafts your claims, it's always possible that a patent may be declared invalid.  Don't assume that your patent will survive all attacks just because an examiner helps you with your claims. (By the way, the same is true even if a patent attorney drafts your application; the difference being that you can sue the attorney for malpractice but not the examiner). Nobody can guarantee that an issued patent won't be later determined to be invalid, or too narrowly drawn to cover infringements. That often depends on the evidence that's uncovered, the tenacity of each party in the dispute, and the whims of the legal system.
"Based on the legal advice I have read on your site ..." Not to put too fine a point on it, Nolo and the Dear Rich Staff shy away from providing legal advice. Whether or not you should handle your own patent application depends on your resources -- time, money, and technical abilities --  as well as your personality (are you the type of person who can manage a fairly complex project?) If you need further information on whether you are suited (or whether it's worth pursuing a patent), check out Pressman's Patent it Yourself.