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

Q: How can a patent be issued to one inventor using 2 parent and 1 child patent with two inventors listed?

My former partner used 3 of our existing patents as parent/child patents to have me removed from a new patent using my technology. I am not listed on the new patent but I am listed as the inventor on the 3 patents cited as parent/child.

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

A: This is a common question. A couple of points:

(1) It is essential that the correct contributors get listed as inventors. You can't have any more, or any less, or different, people listed as inventors. If wrong people are listed as inventors, the patent may be invalid and not enforceable. This is not like writing an academic paper where the authors are may be included or excluded for business or career reasons.

(2) Determining who is an inventor can be sometimes a little complicated, but it boils down to this: in order for a contributor to be listed as an inventor on a patent, the patent must contain at least one claim that the contributor was an inventor on. Thus, it is very common that patents in a family of patents do not have the same inventor list, because different workers are inventors on different claims. For example, some may be inventors of the claimed widget, others on the method of using the widget, others on the method of making the widget, etc.

I don't know the facts in your case, but if you invented a piece of technology, got a patent on it, and later your ex-partner came up with a new way of using your technology on which he then filed a patent, then you would not be considered the inventor on the second patent.

(3) Finally, you need to separate ownership and inventorship. You can be both an owner and an inventor on a patent, or you could be an owner of a patent but not an inventor on it, or you can be an inventor but not the owner. So if you and your former partner decided that all patents stemming from your partnership will be split after the partnership ends, then you may be not listed on the patent as an inventor but you'd still be an owner of the patent.

Good luck!

Kevin E. Flynn agrees with this answer

1 user found this answer helpful

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

A: The answer from Mr. Mlynek is very good. To approach this from a different angle, I suggest that you look carefully at the claims that were issued in the patent that does not list your name. Look for something that appears in the claims that is inventive that you contributed to the process.

Excuse the simple example but to make the point -- if the original idea was to assemble chairs using screws and you suggested using wood dowels and glue, then claims that incorporate your suggested alternative should list you as an inventor.

If the claims cover items that were part of this project but you cannot identify something that was contributed by you as an idea then you are not a co-inventor on this set of claims. Many times a team member may work on the project and do things associated with perfecting an idea contributed to another. So the question is not whether you helped after the idea was on the table, but whether you contributed the idea that appears on the claims.

NOTE -- there are ways to correct the named inventors on a patent and if you find that you should have been listed as a co-inventor of this claim set, then you can consult a patent attorney for your next steps. If you have already assigned your rights to this family of patents to another party, it may not be worth your money to get your name added but you can sort that out once you are sure you should be listed as a co-inventor.

I hope that this helps.

Kevin E Flynn

1 user found this answer helpful

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