I am current graduate (international) student in a chemistry lab in USA which filed a provisional patent. I just discovered a few days ago that I am not the inventor on the patent although I solely made the product (compound) that we filed patent for. I am the first author on the publication and everyone acknowledges that I did that work. When I asked my professor about it he said we filed that patent long long ago and had no satisfactory answer that why I am not on the inventor list. How could he file a patent without making the product that he is claiming in the patent. I have all the data and experiment properly written in my log book. He included the names of two other students which have minor contribution on that work. I am finishing up my 3rd year but I have 2 more years to work with him. What options I have to get the corrections on the inventors names? Thanks!
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Do you know if a non-provisional was ever filed or any other application filed other than the U.S? A provisional application filed longer than 1 year ago is no longer anything.– George White ♦Commented Jul 19, 2020 at 2:41
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The provisional was filed in somewhere in May 2019. They definitely filed non-provisional later but they never disclosed anything to me. I only became aware of it when professor contacted me to find some answers about the product when a company showed interest in buying the product and asked some questions.– ImranCommented Jul 19, 2020 at 12:46
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I am not sure if they filed any application other than US. I believe they tried to hide these things from me and never talked about it in group meetings.– ImranCommented Jul 19, 2020 at 13:04
1 Answer
I can't determine whether or not you should be listed as an inventor based on your description of your activities. The criteria for inventorship is not at all based on how much effort and time you put into the project. The criteria is based on whether you were responsible for the inventive element that is captured in a claim.
To give an example, let's assume a professor has an inspiration for a novel compound. He determines the synthesis steps and then asks one of his students to perform the experiment. The student spends weeks successfully synthesizing the new compound and weeks more characterizing the performance of the compound. In this scenario, the student would not be an inventor as he/she did not contribute an inventive step. However, let's say the student had to overcome a problem with the synthesis with a clever solution. If the clever synthesis fix ends up in a claim, the student should be named as an inventor.
The point I'm making, is the fact that you worked long and hard on the project isn't relevant to the determination of inventorship. Neither is being first author on a paper. If claims were drafted as part of the provisional application, I'd ask to review the application. If there is some inventive element for which you are responsible then you should be listed as an inventor.
As for you other question:
How could he file a patent without making the product that he is claiming in the patent.
Perhaps surprisingly, there is no requirement to actually make a product or even prove that the invention works to pursue a patent.
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Thanks Eric for the clear explanation. I agree that I should look at the application first and find the innovative points that I am responsible for.– ImranCommented Jul 19, 2020 at 14:58
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"Solely" is nit part of the law. An inventor is one who makes "a" conceptual contribution to something that is claimed.– George White ♦Commented Jul 19, 2020 at 17:52
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@GeorgeWhite Yeah, I was debating that bit. I removed the "solely" and also addressed the second question the OP had.– Eric SCommented Jul 19, 2020 at 18:49
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@Imran Please be advised that there is no requirement to have claims in a provisional application. It is the non-provisional application which is required to have claims.– Eric SCommented Jul 19, 2020 at 18:50