Inventor omitted from the provisional application

Question

I am contesting the list and order of inventors on the patent that my former company is filing. Firstly, they added many more "inventors" even though the idea and whole planning for testing were done by me and my colleague, and additionally, they have hidden our names in the middle of the inventors' list. I know it is not a publication and probably formally it does not matter if you are first or last on the patent but we do feel we should be first (and only to be honest) inventors. I wrote to them that I am not going to sign the assignment documents in that shape so their solution was to remove me whatsoever. My question is, what legal steps can be taken to fight for the correct inventorship and when to do it.

Answer 1

The local employment laws and any agreements you have with the company will govern the ownership issues. I do not have any knowledge in that realm. However, if there is no agreement or action of law automatically assigning the invention to the company, you - as an inventor would have an undivided ownership of the patent under U.S. law.

For the question of inventorship, the location of filing is determination not your location or the company's. All of the listed inventors should sign the application that states they believe themselves (collectively) to be the inventors. Before the AIA law patents were being torn up for incorrect inventorship. Under the laws in place before the AIA incorrect inventorship was grounds for invalidation.

Any attempt to fix inventorship needed to have a signed statement that the incorrect inventorship was done "without deceptive intent." If that couldn't be honesty signed the inventorship could not be fixed and the patent died.

The AIA changed that. All mentions of "deceptive intent" are gone. It will hurt and complicate any resulting patent if is has intentional erroneous inventorship. But, if challenged, they can correct it at any point, even in the middle of an infringement suit. This limits your leverage.

I'm knowledgeable about applying and prosecution of patents as a USPTO registered patent agent but I'm not an attorney. There is probably a way to take them to court but a letter to the company's patent attorney is easy and should cause them to include you. Including people that do not belong is less dangerous to the patent than leaving off a true inventor.

They can declare you an uncooperative inventor (thank the AIA again) and file with you as an inventor but not a signer.

EDIT

Inventorship often changes between a provisional and a non-provisional with multiple inventors, particularly becasue what is claimed determines who is and is not an inventor. There have been issues with foreign applications that get priority from a provisional but have additional inventors in the foreign application. The inventors, collectively, do not have a 100% consistent chain back to the provisional. For that reason the company would be wise to have everybody on the provisional that might be an inventor.

Answer 2

I am not your attorney. The following educational information might not be appropriate for your situation. You might want to consult your own attorney.

The US constitution gives the intellectual property ownership rights of patents to their inventors. Inventors often assign those rights to a corporation but do not need to. Any owner of an interest in a patent may give others a license, which could effectively render the patent worthless to others.

Incorrectly naming an inventor gives them undeserved control over property and its value. Incorrectly omitting an inventor robs them of their property right. Either situation, if proven by evidence in court, is grounds for invalidating a US patent.

The standard for inventorship is anybody who contributed to conceiving the idea in any claim. If there is even 1 claim with a tiny additional feature that somebody helped to conceive, they must be named as an inventor.

You might want to look carefully at the claims, as filed, and collect evidence regarding who did contribute to any of the claims and who did not contribute to any of the claims.

A common error is to name as inventor a person who set out a problem to be solved, such as a manager, but did not participate in conceiving the solution. Another common error is to name as inventor a person who merely implemented the solution, such as a junior programmer, but did not participate in conceiving the solution.

If the patent application is pending but not granted, you could raise your concern with the attorney or agent handling prosecution of the application. Doing so in a polite way, assuming an honest mistake, is probably best. They are ethically obligated to investigate and get it right. If you raised the issue and the patent is eventually granted with an inventorship list that is incorrect, you have what is needed to invalidate the patent.

If the patent is already granted with an incorrect list of inventorship that was an honest mistake, such as because the attorney was misinformed, it can be corrected. You could raise the issue, politely, with the owner of the patent. If they refuse, even faced with your evidence, then you can invalidate the patent.

If you are able to invalidate the patent, and do not wish to remain on good terms with the owner, you can approach whoever the owner has licensed the patent to. The licensee might be very glad for your help to stop having to pay a license fee for the patent.

If you have signed an employment agreement that obligates you to assign your invention rights to your employer, and you refuse to sign the assignment agreement, then you might be in breach of your employment contract. The employer patent applicant might be able to file your employment agreement with the patent office and claim ownership without your cooperation.

As for the order of names, there is no legal requirement as to the order. Generally, whoever is paying the lawyer's fees can decide what they want the order of inventors to be. They might change the order if you ask nicely.

Edit: Since the question is about a provisional patent application, and a provisional application need not have claims, the inventorship question would hinge on who contributed to any concept described in the document. That might be a longer list of inventors than will be named on a potential future non-provisional application. Inventorship in that application will depend on the claim.