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The situation: After I left a particular company, they applied for a patent on something I had worked on, and contacted me to sign the application.
Although I consider myself to be the primary and sole inventor, the patent's lists the inventors as 1) my former boss, 2) myself in that order. I signed, and the patent was granted.

At the time, I was uneasy about this, but simultaneously did not want to make an issue with my former employer, and as well was perhaps a bit star-struck by the possibility of a patent.

Now however, if I were to be asked, I would say that my boss was not an inventor at all (let alone the primary inventor). I believe I can argue this case; for the purpose of this question, please assume that I can.

So the question: does this in any way affect the validity/enforceability of the patent?

I have searched on the web and found some related material, but nothing that conclusively answers the question. It appears that it may hinge on whether the inventors are incorrectly listed "with deceptive intent". In the present case, I would guess that my former boss and I might be in disagreement, but I'm not sure how this translates to deceptive intent (or not).

Related #1, Degnan & Huskey, Inventorship: What Happens When You Don't Get It Right? http://www.hollandhart.com/files/Publication/c61a859b-4515-4ae5-9b0d-ea5df0761f79/Presentation/PublicationAttachment/142a44bb-f91b-4bb8-bc54-4d9dbd9447b9/InventorshipWhatHappens.pdf This article states: "A patent is invalid unless it lists the first and true inventor or inventors of the claimed invention. Accordingly, if the inventive entity listed on an issued patent is incorrect and the patent cannot be corrected due to deceptive intent, the patent is invalid and the owners cannot enforce it."

Related #2 What should I do if my name is missing from a patent? says "The patent owner faces some very serious problems with enforcement of patent rights if any inventor is not properly identified." but the context for this quote is focusing on missing inventors rather than extraneous inventors and incorrect order.

Related #3, A slide set entitled "Who should a patent attorney include in List of Inventors, And why you need to leave the boss, technician, and yourself off the list". http://www.mgiip.com/wp-content/uploads/2012/01/Inventorship-in-U-S-Patent-Practice1.pdf

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2 Answers 2

The order of the named inventors on a patent doesn't matter, for legal purposes anyway.

Technically, a patent with incorrectly named inventors is not enforceable. However this will likely be a non-issue because even if the patent's assignee ever decides to enforce the patent and the accused infringer figures out there's an inventorship issue, it's easily correctable.

(The "without deceptive intent" requirement of correcting inventorship was removed by the AIA, so that's not an roadblock anymore.)

35 U.S.C. 256 Correction of named inventor. (Sept. 16, 2012)

(a) CORRECTION.—Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

(b) PATENT VALID IF ERROR CORRECTED.— The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.

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Regarding the "it's easily correctable": Don't all the listed inventors have to agree to a change? If A, B are listed, and A says later that B was not an inventor, but B says (s)he was... presumably this dispute has to be resolved before the inventorship problem can be corrected. Could there be a case where it is not easily resolved? –  reluctantInventor Jan 3 '13 at 9:04
But what about the "for hire" element. If he was an employee wouldn't the sole ownership of the intellectual property be the companies? –  doug65536 Jan 4 '13 at 18:38
@doug65536, you're thinking of copyright I think. –  Jay Smith-Hill Jan 4 '13 at 20:53
@JaySmith-Hill Oops, you're right, I am! –  doug65536 Jan 4 '13 at 21:51
In addition - courts will ordinarily refuse to allow a named inventor to later provide testimony that criticizes the patent. Wikipedia has a fairly good discussion of this doctrine known as assignor estoppel. en.wikipedia.org/wiki/Assignor_estoppel –  Dennis Crouch Jan 10 '13 at 16:02

Regarding the "it's easily correctable": Don't all the listed inventors have to agree to a change? If A, B are listed, and A says later that B was not an inventor, but B says (s)he was... presumably this dispute has to be resolved before the inventorship problem can be corrected. Could there be a case where it is not easily resolved?

[Ran out of space in the comment section.]

Not necessarily. In the administrative solution, defined in section (a) of the statute, requires that all listed inventors and all assignees agree to the change.

However, in your scenario, section (b) of the statute also lets A go to court and prove that B was not a true inventor, in which case the court can order the director of the PTO to correct the inventorship. Unlike section (a)'s administrative remedy, a court is only required to give all parties notice and an opportunity to be heard. So at most B would have to be given notice that A was trying to get him removed as an inventor, and the court would have to listen to his side of the story. If B fought the change, A would have to prove that B was not an inventor by "clear and convincing" evidence but B does not have to actually agree.

I described the fact pattern in your original question as "easily correctable" because, assuming you already assigned all your rights in the patent to your former employer, it would seem to be in their best interest not to fight you over it anyway. On the other hand, it doesn't seem worth your time and/or effort to bring it up either.

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