5

Say I had a design/concept presented to an expert, and that person had analyzed and discovered a mistake in my work, then I proceeded to solve that problem. Do they have rights to my idea? Claiming their contributions as valid corrections that inspired my success?

This question is based on the patent laws in the United States.

3

I'm speaking as an inventor here, not a lawyer. There are generally several if not many people associated with a technology that spawns a patent. The question of whether one of those people is considered an inventor goes directly to the claims. Did that person contribute the essential inventive step in at least one claim? If not, then they aren't the inventor. So the question is whether the correction provided the inventive step to one of your claims. Here is an example. I have a patent on an algorithm for analyzing real time PCR data. One of my colleagues suggested an alternative to a part of the algorithm. It was worthwhile to include the alternative in the specification and claims to keep someone from designing around the preferred implementation. Therefore, my colleague was included as a co-inventor. If that claim had been left out, then he wouldn't have been included as a co-inventor.

Now, I'm speaking specifically of whether someone should be considered an inventor on a patent. Whether there is any legal standing regarding providing inspiration or encouragement that may lead to an invention I can't say and will leave to one of the trained legal contributors to this site.

  • Say I designed a component, that would function in a process. The individual noted a flaw or flaws that would hinder that process/application, I agreed to their observations, and I re-designed the component and it's successful, that person's observation is not considered inventive correct? – UnkownConstants May 20 '17 at 1:33
  • @UnkownConstants The observation is not necessarily inventive, but it could possibly be. The best course of action would be to consult with an actual patent attorney or agent. – Eric Shain May 20 '17 at 2:30
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It is true that if someone makes a contribution to your invention and that contribution is an inventive step and leads to a claim he should be cited as a co-inventor, it still does not however necessarily mean he is entitled to any rights to the resulting patent. One must distinguish between inventorship of the invention and ownership of the patent. If one was hired to draft a patent specification by an inventor and one makes a suggestion that leads to an additional claim one should be cited as a co-inventor. However, it is suggested that the correct approach should be that one cede all one's interest in the patent to the original inventor. If this is not done, there is the risk that inventors will never engage the services of someone to draft a patent specification for them.

  • I'm not sure a contribution by an expert which materially improves the function is at all analogous to the contributions by a patent attorney. In the latter case, conflict of interest rules should generally prevent an attorney from getting any ownership stake, irrespective of their contribution. In addition, there is no mechanism by which you could cede your right (and the consequent obligation) to be named as an inventor, if you are an inventor. – Maca May 16 '17 at 23:28
  • It is generally true that the role that an expert plays and that of a patent attorney are different. It however does happen that a patent attorney during the drafting of a patent specification does think of another embodiment that can lead to another claim. An inventor is anyone that contributes to a claim. If one files a patent all the inventors must be mentioned. See: panitchlaw.com/problems-solved-avoided/…. The difficulty one faces if the patent attorney is not mentioned as an inventor patent can be declared invalid. – Deon P Hugo May 18 '17 at 7:19
  • It is true AIA dropped 102(f) that requires that the application/patent correctly name all inventors. However, most believe such is still required. See:intelproplaw.com/ip_forum/index.php?topic=25304.0 – Deon P Hugo May 18 '17 at 7:27
  • As I understand the position prior to AIA only the inventors could apply for a patent. They are considered to be the owners of the patent at least as a start. Any ownership that changed from them had to be documented. The point is once the patent attorney contributes to a claim he is an inventor whether he likes it or not. That is why it is suggested that the patent attorney must cede any right he may have to the client or original inventor. The transfer of rights to the client must be so reflected in the patent application. It may be though that it is not necessary under the new AIA. – Deon P Hugo May 18 '17 at 7:38

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