Micro Entity Filing Status and ownership issues when there is more than one inventor

Question

An individual whom I paid for advice in preparation of my latest application, a CIP, has asked if I would include his name as a co-inventor. He says it is a request, not an expectation, and it's not highly important to him. (The individual is neither an attorney nor a registered patent agent, but has considerable experience with patents and has his name on several.) I am the primary inventor and applicant, and paying all application costs. I qualify for Micro-Entity status and will file as such.

There are two issues I need to understand better before making this decision:

1. In a recent phone conversation with an examiner at USPTO (who clarified that he does not deal specifically with fee-related issues) tells me that, from his reading, all listed inventors must meet the Micro Entity status income guideline. The individual I refer to does not. (income over the limit) Even though there is no clear verification in the beginning, could this cause me trouble later, and therefore best not to do it?
2. Even with me as the first-named inventor and applicant, is there ever any sense in which additional listed inventors could ever claim any ownwership interest in a patent, if granted and ultimately monetized – despite there being no formal written contract addressing this?

Answer 1

Do not put this person's name on the patent as an inventor! And please do not treat their advice as gospel.

First, they are breaking the rules by providing advice to you about your filing. It is practicing law without a license. Next, the examiner is correct that all inventors need to qualify as micro entity applicants.

From the form

GROSS INCOME LIMIT ON APPLICANTS AND INVENTORS – Neither the applicant nor the inventor nor a joint inventor, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding the “Maximum Qualifying Gross Income” reported on the USPTO Web site at http://www.uspto.gov/patents/law/micro_entity.jsp which is equal to three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.

If you fraudulently claim micro entity it could put your rights in jeopardy. Most important - Absent an agreement between the "inventors", each inventor has a undivided ownership to the patent rights without any requirement to compensate the other inventors. "First named inventor" has no rights any different from any other inventor. The order listed has no legal significance. You would know this if your advisor was actually knowledgeable, ethical and legitimate.

One reason they may be asking to be an inventor is that, as an inventor, they would not be breaking the rules to help you file. Only people who have made a conceptual contribution to something is a claim are legitimate inventors. In the recent past, patents were torn up for incorrect deceptive inventorship.

This person is unqualified, breaking the rules and very likely putting your rights in jeopardy.