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I am going to give my final viva voce for my PhD. My supervisor is asking me to sign an IPR declaration letter before leaving the institute. In the letter it is mentioned that my name shall not be included in any IP filing/publication as an inventor, even though those can be results of my invention or research.

My question is, Can someone exclude me from becoming inventor of my own research output like this? Even if I have to sign it now under indirect pressure (as I have to get my PhD), may I challenge the contents of the declaration in future?

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  • Do you have any idea what the intent is of this wording? Are they telling you they will not be filing at all or that they will be filing but they do not think you made an inventive contribution, or they will file but carefully exclude anything you may have contributed to, or they will knowing file on your work and do not intend to credit you? I some of those cases, the letter in their files has a possibly to be used against them in a patent dispute.
    – George White
    Aug 22, 2022 at 20:26
  • It’s strange that it lumped IP and authorship. Sounds like they don’t think you did anything original.
    – George White
    Aug 22, 2022 at 22:23
  • I am also clueless about it. Because part of that research work was added to my thesis and some parts of it were done by me after the submission of my thesis with the knowledge of my supervisor. So, he certainly thinks that I did inventive contribution on the work. However, he may give the remaining research work to some other student, who might also be interested in getting first authorship or inventorship in my remaining work. Removing me from authorship or inventorship may be an option for him go attract the new student (I am telling this because similar thing happened to one of my seniors Aug 23, 2022 at 2:33
  • the declaration doesn't specify in which works I will not get authorship/ inventorship. Instead it states that I have to disclose any works done in the lab during my PhD to my supervisor and I understand that my name will not be included as an author or inventor in the IP filing/ publications. Therefore, it includes the works done by me directly or indirectly. I certainly am not much interested in works where I might have indirect contributions. But as far as I understand, according to the declaration I have to withdraw my claims from the works with direct and inventive contributions too. Aug 23, 2022 at 2:54

2 Answers 2

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I am not a lawyer. I believe that excluding an actual inventor is grounds for invalidating a patent. That said, who is an inventor is often misunderstood. An inventor is responsible for at least one of the claims. Contributing effort is not enough.

My own opinion is that an agreement that excludes you from being listed as an inventor on a patent where you are truly an inventor is unethical if not illegal. There is no reason for this either. It is quite common for agreements to be signed to assign your rights to an invention to the organization that paid you for your efforts. That way you get your name listed as an inventor and the institution retains all legal and financial rights to the resulting patent. In any case this question might be better posted on the Law SE site where lots of actual lawyers hang out.

As for you being listed as an author on publications, that question should be posted on the Academia SE site. I think that is likely unethical too.

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  • Thank you for the information34 Aug 23, 2022 at 2:36
  • But if I have to sign the declaration (as I want a hassle free exit) can I still challenge it in future if I am denied authorship or inventorship where I deserve that? Or the declaration would be used as a bar to exclude me from future authorship and inventorship ? Aug 23, 2022 at 2:46
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    Wrong place to ask about authorship but inventorship in the US should depend upon exact wording of claims and your conceptual contributions. It is hard to see that a blanket statement can apply to a patent that is not yet drafted. But it might also be hard to prove who invented what later.
    – George White
    Aug 23, 2022 at 4:54
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In the U.S. inventorship is critical. All rights flow from the rights initially possessed by the inventor(s). Before the AIA law went into effect patents were being invalidated for knowingly having incorrect inventorship. Now it is easier to fix inventorship in the U.S. even during litigation.

Most other places put less legal weigh on invetorship but all significant places do require inventors to be listed. The criteria as to who is and who isn't an inventor are looser with the head of a department often listed in some cultures even if they had no inventive contribution.

I think this letter request is strange but do not know the background of your work or the places they might or might not file.

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