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A little under a year ago, I filed my first provisional patent (in the USA) with a very small group of people. Recently, it came to my attention that one of the co-inventors has added a bunch of other people as co-inventors to the patent. I find it very strange that (i) I was not consulted about this, and (ii) on the topic of these matters I was not cc'ed on any of the email to/from the patent law firm that is handling the patent application for us.

My question is twofold: firstly, is it legal? I.e., does any co-inventor have the power to add other co-inventors without the consent of other people listed on the patent? Secondly, is this acceptable behavior? Personally, I find it very strange and I feel a bit upset, but I am also very new to patents, so I might have the wrong expectations for how this usually works. Since it is still in the provisional stage, I could probably object and try to counter this move, but I first wanted to get a better sense of whether what they did is strange or not.

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    "A company is handling for us" ?? I hope it is a patent law firm that is handling it for you. Can you provide more details about the creation and filing of the provisional application? Do you have a written agreement among the inventors as to ownership and control of the patent that might issue?
    – George White
    Sep 8 at 18:10
  • @GeorgeWhite Thank you for the questions. (1) Indeed, I should have written 'patent law firm'; this has been fixed now. (2) I do not think there has been a written agreement that explicitly specified that. On the provisional patent we all appeared on the same footing, and there was no separate document for ownership etc. Sep 8 at 18:16
  • When a patent issues all of the listed inventors have equal and complete rights under the patent. That means they can all start competing companies making the invention (assuming no other barriers), that each can offer non-exclusive licenses to others and that no one can give a license with any form of exclusivity. No need to share proceeds. It is a mess. If you all work for the same company and all assign rights to the company there is no problem. Independent inventors normally all assign all their rights to a corp., LLC, or ordinary partnership with agreed upon ownership and control.
    – George White
    Sep 8 at 20:04
  • Attorneys deal with clients and it is their clients’ interest they protect. If you do not collectively constitute an entity the group can’t really be the client. Who is the actual client? One individual with written permission to represent the group?
    – George White
    Sep 8 at 20:10
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I'll preface this with stating I am not a lawyer so I'll avoid commenting on what is "legal". You have filed a provisional patent application. There is no such thing as a provisional patent. Provisional applications never become patents on their own. You and your co-inventors will need to file a non-provisional application which will have claims.

To be an legitimate inventor, a person needs to be responsible for the content of at least one of the claims. Just working hard isn't enough. Taking lots of data isn't enough. Being a great team member isn't enough. The patent attorney drafting the non-provisional application should be able to help determine the actual inventors. Each inventor should be able to point to at least one claim and be able to justify that it wouldn't exist without their contribution.

If you are working for a company it probably doesn't much matter because the company will probably own the rights to the patent. However if you and your co-inventors are working independently of a company you really need to consider your relationship with regards to ownership of the technology and have a legal agreement drafted.

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