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I had a summer internship with a big corporation last year and I just found that they filed a patent based on my work without notifying me or including my name. I signed IP waivers but cannot recall the details. Is this something I should worry about?

  • To get a useful answer, you need to be more specific about the kind of thing you did, and the kind of documents you signed. That doesn't mean 'spill confidential technical details' (not advisable to do that anyway). But you can say generally whether/how you took initiatives or adapted something, and what kind of rights/permissions were given/taken by documents you signed. If you didn't keep copy of what you signed, then ask for copy/copies right now if you're interested in the rights. (Next point, have you assessed realistically whether their likely value is worth any efforts here?) – terry-s Jul 7 '17 at 14:37
  • Once you've been specific about what you did, you would need a cool-headed appraisal of how (if at all) it relates to what is claimed in the patent application (if any). Consider whether to ask about that directly, and/or whether to wait the ~18 months between first filing and publication and watch out for the publication. – terry-s Jul 7 '17 at 14:41
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My understanding (and I'm not a lawyer), it that the patent can be invalidated if it doesn't correctly list the inventors. Since it doesn't cost the company any more money to list you as an inventor, they really should if you indeed merit it.

That said, you need to determine if you actually are an inventor. Here is a scenario. Lets say that Mary has a great idea for a new widget. She sketches it up and her management decides to pursue it. Bob works for two weeks creating CAD models and then Sarah spends a month machining a prototype. Jack spends 2 months testing and characterizing the widget showing it works. A patent application is drafted and the patent attorneys decide that only Mary is the inventor because only she came up with the novel idea which is expressed in the claims. While the other contributed greatly to the success of the invention, they didn't actually invent anything.

So the bottom line is you need to look at the claims. Is there at least one claim where you were the one who came up with the novel or inventive step? If so, you need to be listed as an inventor on the application. Applications typically take 18 months to publish so you may not be able to see the application for a while. I would contact your former employer (perhaps you manager) and ask about the status of the application and whether you need to be included as one of the inventors. You can express concern that the patent be valid with respect to inventorship.

Although there really isn't anything you personally should worry about, I do think you should verify whether you should be listed as an inventor and if so make sure you are. Having a patent on your resume looks good and could help you while seeking future employment.

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If it's your invention you have to be named as inventor, but why would you worry about it? If any it's their problem. If you want to know if you can get anything out of it, the ip weavers (you have copies?) can tell you.

If you want to be named as an inventor, I'd suggest contacting them as a first step. If you lost your copies of the waivers, you can also ask them to provide you new copies.

  • Even with a waiver, the actual inventor needs to be named on the patent. Since it's just been filed it probably hasn't even published yet so perhaps the inventors names can be amended. – Eric Shain May 5 '17 at 0:12

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