Developed methodology listed in patent claims, yet not listed as an inventor?

Question

Myself and a co-worker developed the methodology for performing a process (software development), and we even helped author the claims for the provisional patent application, yet we have been left off the patent as inventors. What kind of recourse do we have on this type of situation? I mainly just want my name listed as an inventor on this patent.

Answer 1

Since the AIA went into effect it is easier to correct inventorship. See this article "AIA Breathes Life into Inventorship Correction in PTO", or any of numerous articles that pop up in a google search of AIA inventorship. For applications filed prior to the AIA taking effect, a patent being asserted in court could be challenged and invalidated for incorrect inventorship and correcting inventorship at that point required that the original error was "without deceptive intent". If that was not true, everybody with a stake in the patent was unfixably screwed. Now that requirement is gone and it can be fixed in court and also fixed via the USPTO without a court case without establishing no deceptive intent. So you bringing this up with the applicant/co-inventors/assignee should not backfire and kill the patent that you hope lays the golden egg. Obviously you need professional advice about your specific case.

Post AIA we have -

Correction of inventorship in patent, pursuant to 35 U.S.C. 256. (b) Any request to correct inventorship of a patent pursuant to paragraph (a) of this section must be accompanied by: (1) A statement from each person who is being added as an inventor and each person who is currently named as an inventor either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change;

Pre AIA we have -

2.14 Correction of Inventorship Under 37 CFR 1.48(a) or (c) Filed Before Sept. 16, 2012, Sufficient In view of the request to correct inventorship under 37 CFR 1.48 and the accompanying papers filed before September 16, 2012, it has been found that this nonprovisional application, as filed, through error and without deceptive intent, improperly set forth the inventorship, and accordingly, this application has been corrected in compliance with 37 CFR 1.48 (1). The inventorship of this application has been changed by 2.

Answer 2

In theory, claims in a patent issued with incomplete inventorship disclosure may be invalid for fraud and thus unenforceable. If the applicants still have a pending application, they may amend the claims to remove your part of the work, or amend the file to include your inventorship (which may require an "explanation" at this point). A resulting patent may still be of questionable validity in view of the earlier "ownership error".

Answer 3

According to the USPTO 37 C.F.R. 1.45 Application for patent by joint inventors, you can apply for joint inventorship provided you have contributed in the development of the patent and each inventors must make an inventor's oath or declaration as required by Section 1.63. Inventors can apply for a joint patent even though:

(1) They did not physically work together or at the same time; (2) Each inventor did not make the same type or amount of contribution; or (3) Each inventor did not make a contribution to the subject matter of every claim of the application.

If you fit the definition of a co-inventor and the applicant did not include you and your co-worker as an inventor of the patent, you might have the right to file a case against the applicant. Ask an expert for the right thing to do in such situation.