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I worked as a consultant a Chinese company and we had a confidentiality agreement and written agreement (hand note signed) about ownership and patents applications and royalty payment. After I disclosed multiple designs, each time response was that my design is no good. A year and half later I found out that they had applied for US and Chinese Patents without my name as inventor and got issued, even though I immediately informed the company to correct the error. At first they said they will pay me $5000 as I am considered a good friend. They told me they manufactured and sold in small quantity to some one they don't tell me and that the design was no use to them. I said then assign to me and also make correction to error. Now they started saying I have nothing to do with the design and the patent. To protect my priority date and first to invent I did file provisional application each time I sent the design. I asked them if should go ahead with patenting. But I did not file for non-provisional. What are my Option?

  • Welcome to Ask Patents! I would probably suggest reaching out to a patent professional for this. It sounds like you're far enough into the game that it's worth making sure everything gets done correctly. I'm leaving this question open in case a member of our community can clear anything up, but I'd definitely look into that route as well. – Matthew Haugen Mar 15 '16 at 3:44
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I can see a few issues which I will briefly discuss, though this is more of a long comment rather than an answer. This is very much a case where a patent attorney or lawyer should get involved.

Who owns the invention?

You have an explicit agreement about ownership with the company, which should make this clear. Without seeing the agreement, I can only speculate.

So that's what I'll do. I would expect that you have already agreed that the company owns the rights to the inventions. In that case, it is really up to them whether and how they wish to patent it.

Can you be added as an inventor?

Yes. You cannot assign away your right to be named as an inventor. However, just being named as the inventor doesn't really give you any rights, it just lets you see your name on the document. See this question and the answers for details.

What is to become of your patent applications?

Assuming you have agreed that the company owns the invention, you probably did not have the right to file your own patent applications for it. In any case, if you failed to file a non-provisional after a year, you have probably lost your rights anyway, so it's a moot point.

  • The provisional application can be used to invalidate the manufacturer's patent, couldn't it. Anyway, it's better to get a lawyer. The case must be approached carefully and with consideration to other non-patent issues. The manufacturer might just ignore the case because they don't value the patent anyway, or they count on the other side to run out of money in an expensive litigation, or they could just think that the jurisdiction can't reach them. – daniel Mar 16 '16 at 13:35
  • Would it not be punishable for perjury because Chinese lied to USPTO. – Idea Mar 16 '16 at 19:30
  • Technically, it sounds like the original poster might actually be the sole inventor. If that's the case, being named as the sole inventor gives the poster all of the patent rights, and he actually might be able to sue the Chinese company for patent infringement as it sounds like no royalty payments have been made. – SGN Mar 17 '16 at 2:01
  • Thanks at you all for the comments. I am the sole inventor. – Idea Mar 17 '16 at 3:33

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