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I have had a business partner for twenty years. We came together in my Business that he used as the birth of the IP in question. Listing himself on publications founder/owner with the exclusion of not so much as a reference to me as his business partner. I am (for the most part the conceptual part/with guidance through my research and pure intuition/solution, problem solver). He took my sweat equity/brain-trust/conception/ into patents and put our companies CEO and IP Attorney on the patents, leaving my name off. He has used the term "an idea is not a patent" over, over, and over again. To the point of suspicion. His IP attorney wants to reduce me down to the claims....X did I come up with the idea of using the LED's etc, claiming I've been only his researcher. I have been called a disruptive innovator, dragon slayer, imagineer, creator, on and on to name just a few...plus statements of "look what our work together in ...blank, blank business....has become_ To make matters worse this is an invention that does not relate to any of his previous patents, however it relates directly to my previous occupation. What constitutes an inventor? Is it just the mechanical/electrical/software terms relating to the patent/prototype (which I was involved in every engineering meeting) or is it the process of how the invention came to fruition and who contributed in that process?

*What should one say if they're told "an idea is not a patent", or you've been just his researcher. Ok where's the proof that you came up with the use of LED lights etc.?*I am in an arena where they understand the game and I have to catch up with the verbiage.

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2 Answers 2

Inventorship is a legal issue based of questions of fact. C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 1352 (Fed. Cir. 1998). To be named as an inventor, one must have contributed to the invention, meaning at least one patent claim. See 35 U.S.C. § 116.

Further, a joint inventor must have contributed in some significant manner to the conception of the invention. “Each inventor must contribute to the joint arrival at a definite and permanent idea of the invention as it will be used in practice.” Burroughs Wellcome Co. v. Barr Lab., 40 F.3d 1223, 1229 (Fed. Cir. 1994).

Conception of an invention occurs when “only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.” Id. at 1228. “One who merely suggests an idea of a result to be accomplished, rather than means of accomplishing it, is not a joint inventor.” Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1450 (Fed. Cir. 1998).

You should consult an attorney if you have concerns. The company attorney is not your attorney, and it is possible for your personal interest to be adverse to those of a company in which you hold stock. The fact that the company attorney is also the CEO may be cause for additional concern. Please clarify whether the attorney is being included as an inventor.

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One thing to consider is does the invention, whichever of you are the inventors, belong to the company anyway? While it is important to get inventorship correct, if all of you have assigned or promised to assign your rights to the business/partnership, you may all be fighting each other over something with no economic impact. Did the attorney and the CEO make conceptual contributions to something that is being claimed? –  George White Feb 12 '13 at 17:53
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This is a good article on inventorship, although please note that "deceptive intent" is no longer an issue due to the new AIA law. The fact that people think of you as a problem solver, that it is in your field and the amount of sweat you put in are not relevant. On this specific application did you make a conceptual contribution to something that is claimed? If there are 10 claims and you contributed to only one of them you are an inventor. If that claim is left out then you are not an inventor on that application.

Sometimes an invention starts with person A having a thought that is a desired outcome with no way of doing it and person B then has to invent a structure that accomplishes it. B is the inventor. In other cases A has a thought that includes a solution but not a particularly practical one and B knows of some existing technique or material to make it cost-effective. A is probably the inventor and B probably isn't.

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