1

An acquaintance is in the following situation…

Bob is a PhD student. His advisor would like him to patent his work in the medical field. Bob writes patent application. Advisor adds another author to the patent who was not involved in developing the work. Advisor "offers" Bob x% of the profits (less than 20%) although he developed all of the work and wrote the patent. Bob refuses to sign partly because the low share does not reflect his contribution to the work, and partly out of the ethicality of adding an unrelated author. Days go by and advisor lowers the offer to x-1%, and suggests that this will go even lower. Advisor seems to be insinuating that he would file the patent without Bob.

If this all depends on an employment contact, Bob is a PhD student so that probably does not apply; therefore, please assume that the working contract makes no such claims.

Ethics aside, what is legally supposed to happen if Bob does not agree to this split of the profits? Could the advisor, for instance, legally file the patent without Bob's consent? Could Bob file the patent without the advisor's consent?

It is unclear to me how such disputes affect filing (or not).

Note: Filing is in US and Germany.

  • 1
    It may depend on the employment agreement between the student and the institution. In industry, the usual terms are that the company owns all your work product including inventions. PhD students are effectively employees of their department/lab so a similar situation may exist legally. – Eric Shain Jan 31 at 23:41
  • Excellent point. I didn't think of that – bremen_matt Feb 1 at 1:16
  • I’m not sure the contractual aspects are on topic for this site. Certainly, the actual inventor’s name must be listed as such. Also the jurisdiction may matter so what country are you talking about? – Eric Shain Feb 1 at 1:28
  • I think they would be filing in Germany and USA – bremen_matt Feb 1 at 1:54
  • 1
    @bremen_matt is Bob located in germany? If yes, he must file a "erfindungsmeldung" (mention of the invention) with his employer (the university). The university than either explicitly declines or implicitly (by not declining) or explicitly accepts the invention and then has to file for a patent and pay Bob a part of the profits. That part can be determined later. However, that would be off topic here because it's about the ArbnErfG not patent law. In the US things are a little different so the location matters. – DonQuiKong Feb 1 at 16:16
2

Inventorship is not like academic authorship. Only the true inventor or inventors can sign the declaration required in a U.S. patent application. If there is one true inventor, that person can file. If there is more than one inventors, they all need to sign a declaration that they collectively consider themselves the true inventors. If the inventors have assigned their rights to a company or other organization, that organization can file.

  • In my experience, it is the patent lawyers who determine who is listed as an inventor based on whether a person's contribution ends up in a claim. However, my experience is in the corporate world. – Eric Shain Feb 2 at 15:10

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.