Asked in Patents (Intellectual Property)

Q: How to get justice for the patented work which exclude one or more contributors names?

I am one of the contributed team member for the work patented under XXXXX in 2010. Without my name the group patented the work. Is there any possibility to get justice?

1 Lawyer Answer
Peter D. Mlynek
Peter D. Mlynek
Answered
  • Patents Lawyer
  • Moorestown, NJ

A: This is a very common question, especially when potential inventors leave jobs, or there is a business reorganization, or when some employees just don’t get along with others in the company. Sorry if any of these is your situation.

There are a couple of things that you need to understand.

(1) Listing of inventors on a patent is not like the listing of authors on a journal article. Listing of authors on journal articles or presentation is often not very clear. Yes, you generally list the grad student who struggles to design and run the experiment and writes is up in the thesis, and also the PI, but how many more people on the team do you include? Sometimes it is a political question, with bruised egos of at least some people. We’ve all been through this.

Being listed an inventor on a patent is different because there are very definite and strict rules about who can and cannot be listed as an inventor. This is a fairly well-established area of patent law.

It is crucial that all of the inventors are listed correctly. You cannot have fewer inventors then there should be, you cannot more inventors then there should be, and you cannot have different inventors. Having the wrong inventors may be a fatal mistake.

(2) Just because you are listed as an inventor on a patent, does not automatically mean that you get any rights to the patent. Many times scientists/engineers who are employed by a company are listed on a patent, but they do not get anything out of it beyond their jobs.

(3) In this case, we do not know if your contribution to the project was sufficient for a court to hold that you are indeed a co-inventor. Maybe you are, maybe not.

The attorney who wrote and prosecuted the case always makes sure that the correct contributors are listed as inventors. I don’t know if in this case your contribution was reviewed and the attorney determined that it did not rise to the level of inventorship, or if your contribution was somehow overlooked.

(4) As far as “justice” goes, I am not sure what you are looking for. Yes, the patent may be corrected so that your name appears as an inventor on the patent, but you are likely not going to be paid for it, or benefit from it beyond listing the patent on your CV. The employer (or the university) will continue to own it and benefit from it.

You may wish to speak with a patent attorney if it is really bothering you.

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