Dearborn, MI asked in Patents (Intellectual Property) for Michigan

Q: Do I have rights to a patent claim if I helped research the topic?

So I have spent numerous hours with a team to research a topic. I was then absent for a few months because of school. I then come back to work and they have developed an algorithm that I helped research, but not necessarily design. Do I still have rights to be on my teams patent?

2 Lawyer Answers
Peter D. Mlynek
Peter D. Mlynek
  • Patents Lawyer
  • Moorestown, NJ

A: This is a very frequent question. A couple of points.

(1) It is very, VERY important to identify the inventors correctly. Only the true inventors, not any more, not any less. Unlike selecting authors in journal articles or posters, there is no leeway. The patent attorney needs to get the list of inventors correct.

(2) If you worked for a company or university, then you likely had to sign over your inventions. You may be listed as the inventor, but you likely not get to be the owner of the patent.

(3) You need to talk to the patent lawyer who is drafting and filing the patent application about your contribution to the invention, and let the lawyer make the determination. The patent attorney will be very interested in talking with you, even if other people do not want you to.

(4) I don't know what your entire contribution was, but based only on what you wrote, I would guess that your contribution does not qualify you to be an inventor.

Good luck!

Kevin E. Flynn
Kevin E. Flynn
  • Patents Lawyer
  • Chapel Hill, NC

A: A good place to start is to look at the current copy of the claims. If you can find a phrase in the claims that would not be there except for your contribution to the project, then it is possible that you are co-inventor of at least the claim that has that phrase.

Inventorship is dynamic during patent prosecution so as claims get added, dropped, or amended, it is possible that your status as a co-inventor may change. For example, a restriction requirement that causes clusters of claims to be dropped from the current application may drop the one claim that you are potential co-inventor. You would no longer be a co-inventor of this claim set and should be dropped. You might be a co-inventor on a later divisional application

My Mlynek is correct that determining inventorship is a task that needs to be done with care by a patent attorney.

I hope this helps.

Kevin E Flynn

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