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I created a computer program for a client and things went bad. I think the client is trying to scam me. The client sent me an email informing they have filed a patent to the program I made, and even if I refuse to agree to additional paper work they still own everything and don't have to pay me. They sent me a description of the patent. A lot of the things are very generic, and I was wondering if someone could confirm if such things can be patented or are too generic?

TL;DR does the following transcript from a message deserve any attention?

The program functionality has now been filed for patenting. This entails I own functionality on:

  1. A program that runs on any Computer, Smartphone, Tablet, Electronic device, that can create a/multiple box shape filled in with any colour or blank with an outline.
  2. A program that runs on any Computer, Smartphone, Tablet, Electronic device, that can create a/multiple Free Form Shape(s) filled in with any colour or blank with an outline.
  3. The box(s) can overlap any other source on a monitor, or box(s) that do not overlap any other source on a monitor.
  4. The Free Form Shape can overlap any other source on a monitor, or Free Form Shapes that do not overlap any other source on a monitor.
  5. Box(s) can be deleted at anytime. Box(s) can be deleted individually.
  6. Box(s) can be locked in place.
  7. Box(s) that can be moved around.
  8. Free Form Shape(s) that can be deleted at anytime. Free form shapes that can be deleted individually.
  9. Free Form Shape(s) can be locked in place. 10 Free Form Shape(s) that can be moved around. Now that I have a patent, any program that has any of those specific functions is now under the patent that I own and can only be released under my written consent. This means you cannot use what you have done for anything beyond using it for your own personal use. Failure to do so means I will press legal action against you. Because you have been informed of the patent you cannot show the program to anyone else without disclosing that there is a patent on the functionalities and that you do not own the patent on them. Failure to do so will hold you legally liable against the individual(s) you have told. I will take legal action against said individual(s) and yourself.

We never discussed ownership and no contract was agreed upon. This sort of came out of the blue.

  • What is your verbal or written contact with the client say about ownership of the IP? Was this work for hire and they own the IP? – BlueDogRanch Oct 2 '17 at 2:19
  • @BlueDogRanch there was none. He basically said "if you make a program that does this, I'll give you $xxx for it". And the rest of discussion pertained to technical functionality of the program. – Donttryit Oct 2 '17 at 2:35
  • So, how does ownership suggest they don't have to pay you? The contract was to do a job for a money. Job gets done, money gets paid. – Nij Oct 2 '17 at 2:54
  • @Nij the question was, can such a patent even be valid. It seems to describe just about any graphics program. – Donttryit Oct 2 '17 at 3:00
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    Did they actually pay you? If not, I doubt they have a valid claim to own anything you produced. Their threat isn't even consistent. They claim they've applied for a patent, then they say they have a patent. Patents generally take some time to be granted. – phoog Oct 2 '17 at 5:18
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A pending patent has no legal effect. It only has effect if it is granted, and software patents are very hard to obtain these days.

Also, any legitimate claimant to a patent would provide the Patent and Trademark Office patent pending number, allowing you to verify that there really is a filing and to alert the PTO if there have been misrepresentations made about who the inventor of the patented item is in fact. Lying on a patent application can have severe consequences.

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It is almost impossible to predict what any patent office will grant a patent on, and whether the decision will be upheld if challenged; you would need to consult an intellectual property lawyer, preferably a specialist in software, to be sure.

But from what you have said, the problem doesn't even get that far. If you created the program, the rights in it reside with you until you transfer them on completion of the contract (i.e. payment). If your client has really made a patent application in his name, that is at best worthless and at worst a criminal offence akin to perjury.

Frankly, from the woolliness and tone of the message, I doubt whether the client has done anything beyond misunderstand a few internet articles on patents. The best response would be to send him a message reminding him that you retain all rights until you transfer them and that if he makes or has made any use of the program before then you can sue him for all his profits and any damage to your business. Since he is clearly trying to get out of paying what he agreed, it might be worth paying a lawyer to write the letter; that's a business decision, not a legal one.

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Assuming the work is patentable, if the client specified the result he or she wanted very specifically, the client might actually be considered the inventor, not you. To be an inventor is to make a conceptual contribution to at least one of the claims. I agree that the wording of the email seems to have been done by someone who does not understand patents. Assuming that a patent had been issued, that has nothing to do with letting a third-party look at the code. Whatever the cool patentable part was would have been disclosed in the patent application and be available to the public to examine all they like. A patent stops others from making, selling, offering for sale, importing, or using, the invention. looking at it is not one of those. As for getting a patent application number - if it has not yet been published there is no way to look it up.

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Unless the patent has a number assigned by the USPTO, the description \ claim is at most a provisional patent, which (as I understand it) only provides a priority date if there was a competing claim. OP did not indicate approval of the patent claim by the patent authority (USPTO): i.e. nonprovisional patent.

Although I am newbie to patents, I have been witness to the last two decades of software development. The description of the software raises the question of novelty and the status of the prior art. Another reason why it is (in all likeliness) not a nonprovisional patent.

Best to contact an attorney to determine regarding recourse regarding nonpayment as well as if there is any merit to the patent claim. If you were to demonstrate the software, you would be saving yourself a lot of trouble by disclosing that there may be a patent on the examples owned by a former employer. If the client sues you and the courts adjudicate favor, it is always better to avoid litigation.

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