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My name as Inventor on Company patent

Postby samlefler » Tue Sep 21, 2010 8:47 pm

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The company I work for is a service organization. My company has a client that is in the process of patenting a system I developed.

What should I do to have the client company put my name on the patent?

This is for pure "ego" reasons - not profit.

Thanks,

Sam

Re: My name as Inventor on Company patent

Postby Roger Brown » Thu Sep 23, 2010 9:21 am

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Sam, it would depend if your company did this service as a work for hire and what your employment terms are regarding items designed or created. If that is the case then you are not required to be on the patent. It would be considered a part of your employment and your compensation is your paycheck.
I would be careful about approaching the client with this request because if they hired your employer to develop a system for them and you let ego get in the way you might end up unemployed.
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Re: My name as Inventor on Company patent

Postby apapage » Thu Sep 23, 2010 12:37 pm

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Actually, a patent application must list all of the all of the inventors. If the inventorship is incorrect there is a chance that the patent will not be enforceable particularly if the error was intentional or fraudulent. Whether or not you are an inventor will depend on the claims filed in the patent application.

Roger, you are correct as to the ownership of the patent.

Re: My name as Inventor on Company patent

Postby Gizmo » Thu Sep 23, 2010 12:51 pm

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apapage wrote:Actually, a patent application must list all of the all of the inventors. If the inventorship is incorrect there is a chance that the patent will not be enforceable particularly if the error was intentional or fraudulent. Whether or not you are an inventor will depend on the claims filed in the patent application.

Roger, you are correct as to the ownership of the patent.



Apapage, great info. If you look at the thread below the same scenerio happened to a close inventor friend of mine. He is working with the USPTO at the moment to get someone removed from his patent application that should not of been listed.
All he had to do was submit all the proper documents indicating he was the sole inventor.

viewtopic.php?f=43&t=4311

Re: My name as Inventor on Company patent

Postby apapage » Thu Sep 23, 2010 1:12 pm

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The process is fairly straight forward provided all of the parties required to sign the documents have a working relationship. If one of the parties refuses to sign, then the papers must be filed with a petition to accept without the required signature. This can be very time consuming = expensive. For this reason, it is important to get inventorship correct the first time around.

Re: My name as Inventor on Company patent

Postby samlefler » Sun Sep 26, 2010 7:06 pm

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Well, the company does not cooperate.

What is my best next action?

Thanks again!

Re: My name as Inventor on Company patent

Postby Scrupulous » Mon Sep 27, 2010 3:13 pm

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Good stuff, Antonio.

Here's a little more on the subject, Sam...

viewtopic.php?f=42&t=870
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Re: My name as Inventor on Company patent

Postby apapage » Wed Sep 29, 2010 8:59 pm

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Assuming that you are not challenging ownership, then there isn't much that you can do other than mentioning to the attorney that you believe that you may be an inventor. The attorney will be able to make a call on whether you should be listed based on your contribution and the claims of the patent application. Note, if your contribution was a routine build once given the scope of work then you may not be an inventor. For example, if I gave you the specification for a new website and you simply build the site as any other programmer would then you are not an inventor. If however you used a novel approach to the design then you probably are an inventor. You can try to contact the patent office (I am not certain of the process), but if you are a consultant you may not want to rock the boat.

Re: My name as Inventor on Company patent

Postby Roger Brown » Thu Sep 30, 2010 3:47 am

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Samlefler, you stated:

Well, the company does not cooperate.


Can you expand on that? I assume you approached someone in the company. What was their reasoning for not cooperating? Did they tell you that when you were hired you signed a noncompete clause, an agreement that they own all rights, etc. Give us a better picture of what happened when you brought up the subject.
Where you the sole person working on the project from start to finish or was this as part of a team? Are you a company employee or a subcontractor?
Come visit my sites at http://www.RogerBrown.net
or http://www.looking2license.com
I have gotten 9 products licensed spending less than $100 on each, you can too.

Re: My name as Inventor on Company patent

Postby samlefler » Wed Feb 16, 2011 11:23 pm

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Success!

The filing attorney agreed to add my name to the patent.
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