H1B and patent

[newuser21]

Hi,

I work in NJ on H1B. My inventions are completely different from what I do in my job. Can I file a patent for my personal inventions outside of my job? I worked on these dreams in my spare time in my free time.

Can I earn money from selling or royalty income from this patent as intellectual property?

Thanks

[satch69]

Hi,

I work in NJ on H1B. My inventions are completely different from what I do in my job. Can I file a patent for my personal inventions outside of my job? I worked on these dreams in my spare time in my free time.

Can I earn money from selling or royalty income from this patent as intellectual property?

Thanks

If you can sell a house, you can sell a patent. Similarly, if you can get rental income, you can collect royalties. So long as it is considered "passive income" (similar to selling stock, etc., so long as you are not acting as a broker or agent).

Just make sure your inventions aren't subject to assignment to your employer. Even if you think they are "completely different" they may be subject to assignment depending on the wording in your contract. Although I'm a patent attorney, I can't competently advise you on this issue as I haven't dealt with it before.

[wiweq]

"Can I earn money from selling or royalty income from this patent as intellectual property?"

=> Though you can register your patent, but you can't earn from this. Even though royalty is something passive earning but a work was done in USA with no authorization to build this royalty. Because it's a case specific question, an attorney can suggest you better.

[newuser21]

Thank you both of you for reply.

If you can sell a house, you can sell a patent. Similarly, if you can get rental income, you can collect royalties. So long as it is considered "passive income" (similar to selling stock, etc., so long as you are not acting as a broker or agent).

Just make sure your inventions aren't subject to assignment to your employer. Even if you think they are "completely different" they may be subject to assignment depending on the wording in your contract. Although I'm a patent attorney, I can't competently advise you on this issue as I haven't dealt with it before.

I took a quick look at my employment document. I am a full time employee, I didn't see any restrictions on my intellectual property, just normal NDA and job responsibilities etc.

"Can I earn money from selling or royalty income from this patent as intellectual property?"

=> Though you can register your patent, but you can't earn from this. Even though royalty is something passive earning but a work was done in USA with no authorization to build this royalty. Because it's a case specific question, an attorney can suggest you better.

Can you clarify - "Even though royalty is something passive earning but a work was done in USA with no authorization to build this royalty". Every person has freedom to utilize his personal time for whatever he is interested in, education, research, hobbies etc.

If I do not work for anybody else other than my employer and if an external company is willing to pay just for my invention without making me work for them directly or indirectly, then it would be a passive income, right?

[JoeF]

You can certainly do things as hobby. But, filing a patent means that it is more than a hobby. It could be seen as work.

There is no problem with getting royalties from patents that were filed before you came to the US on H1.

And there are of course no problems with royalties from patents filed in the course of your work (depending on employment agreements, for example.)

I suggest you discuss your situation with a good immigration lawyer.

[wiweq]

Can you clarify - "Even though royalty is something passive earning but a work was done in USA with no authorization to build this royalty". Every person has freedom to utilize his personal time for whatever he is interested in, education, research, hobbies etc.

=> One is free to utilize his/ her personal time in education, hobbies etc. but not free to earn money from it. To earn money you should have approved work permit.

If I do not work for anybody else other than my employer and if an external company is willing to pay just for my invention without making me work for them directly or indirectly, then it would be a passive income, right?

=> Again passive income is okay, but to earn this passive income a 'significant work' was done and it was not authorized. You are free to work for yourself, but earn money from it, the work should be authorized. A significant work is not done if you sell something on ebay or sell the house, but for building a patent it's tough to deny that a significant work was not done!