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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?
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    Did this individual contribute something novel to the invention? Just helping draft an application doesn't make someone an inventor, but if the individual actually contributed to the development of the actual invention, then you may need to list him/her as a co-inventor. – Eric Shain Sep 7 at 12:04
  • It's not a question of "may". If this individual contributed a single claim, they MUST be listed as a co-inventor. If they did not contribute an actual claim, they MUST NOT be listed as a co-inventor. If they are trying to slip in a trivial dependent claim, which is otherwise "obvious", DO NOT allow them to do that. And of course, I'm not a lawyer and this isn't legal advice. Consult a lawyer. – Julie in Austin Sep 8 at 0:49
  • @JulieinAustin You might want to clarify that “contribute a claim” doesn’t mean wrote the claim, but means contributed the inventive element of the claim. – Eric Shain Sep 8 at 3:33
  • The person in question is a patent broker who also has several patents to his name. It was communication about how to develop a more marketable patent family (from my original solo effort) that led to him becoming involved with advice. I also paid for his time in reviewing claims I wrote, and making suggestions, but I did the final drafting of everything. In this case, he made one suggestion about something for me to run with and develop as an idea, but without providing details of how that would be developed or claimed. To what degree does this sound like an co-inventor level contribution? – Charles Sep 8 at 4:21
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    @Charles - An "idea" isn't a claim. As Eric Shain suggested above, there must be an inventive step. When I was at my previous employer, the one where the majority of my patents were issued, I used to engage in a process I called "boxing the patent". Which is making sure the claims were as broad as possible. There is a problem to be solved in order for a claim to be added, solving the problem is the "inventive step". Just saying "What about XYZ?" and not being able to describe how that is solved isn't "inventive". It's just ... an idea. – Julie in Austin Sep 8 at 19:54
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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.

  • Thank you for that very direct advice. I had already decided (a short time ago) not to include this name as a co-inventor, as I was seeing potential complications – but you have provided stronger support for it. To clarify one point: The individual in question provided suggestions regarding the wording of claims, but otherwise was not involved in the actual writing of claims, the overall application preparation, or actual submission of it. – Charles Sep 6 at 20:36
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    "Potential complications" included losing your exclusive rights to control your invention. – George White Sep 6 at 21:03
  • Can you provide any references to a patent law definition of what is "making a conceptual contribution" to a patent? If it is a general idea to consider, but without any specific development details, is that a valid claim for having made a contribution? – Charles Sep 7 at 0:38
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    see leagle.com/decision/1994126340f3d122311078 and search for conception. This is not a black and white area of patent law. Also see long discussion at ipwatchdog.com/2018/03/09/… Remember - joint inventors have equal, undivided rights in the resultant patent regardless of the different degree they contributed to the conception of the claims. That is unless they have an an agreement between them. In your case, the consultant could assign all his/her rights to you. Then they are a co-inventor but you are the sole owner. – George White Sep 7 at 0:48
  • Lawyers write claims all the time. The fact that they do doesn’t in any way make them inventors. – Eric Shain Sep 8 at 3:28

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