Q: Recourse for original inventor excluded from patent application. I contest right of ownership.
My colleague and I were responsible for 100% of the technical data and research for patent application and were inexplicably excluded by other colleague when he refiled secretly. We never assigned our rights and wish to contest right of ownership.
Can you advise me who we should contact at the USPTO?
A: 35 U.S.C. § 256 Correction of named inventor
Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.
(b)Patent Valid if Error Corrected.—
The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.
Thus by going to court, you can force the list of inventors to be corrected by the court and then the court orders the patent office to fix the record.
There are other routes to correct the list of inventors while the inventors are pending, but I believe that would require the assistance of the currently named inventor and assignee. Depending on the facts, you may be able to file the application in your own name as this is the exception to the first to file rule when the second party takes your invention and files it under the second party's name.
One way or the other, you will need the help of an experienced patent attorney.
I hope this helps.
Kevin E Flynn
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