Chicago, IL asked in Patents (Intellectual Property) for Illinois

Q: How can I challenge a patent that I never received credit for?

https://patents.justia.com/patent/D750276

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

A: I am not sure what you mean that you never received credit. I assume that your question is similar to the questions asked by so many scientists and engineers working as an employee or a contractor: you worked on developing a new product for the company, the company got a patent on the invention that is related to the new product, but your name is not listed on the patent as the inventor.

It is extremely important that the correct contributors are listed on the patent as inventors. If the patent omits rightful inventors, or lists wrong people as inventors, then the patent owner has a serious problem: the patent may be unenforceable, and thus worthless. The company really needs to make sure that it lists the correct inventors, even those inventors that were fired or laid off under bad circumstances.

It is possible that your contribution did not meet the prerequisites for you to be listed as an inventor. Being an inventor is not the same as being an author on an article. Workers often contribute to developing a new product, but their contribution does not meet that they are an inventor. A patent lawyer working on a patent application very frequently interviews workers to make sure that the correct people are listed as inventors. It would make sense for the company to correct it, and add you as an inventor, if you indeed are an inventor. Get in contact with the patent attorney who handle the case if possible; although the lawyer has duties to the company and not you, the lawyer will be very interested in making sure the correct inventors are listed on the patent that the lawyer prosecuted.

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

A: I notice that the patent in question is a design patent. So for you to be a co-inventor, you would need to have made a contribution to the novel ornamental appearance of the shudder slat.

There is a mechanism to sue to get the list of inventors corrected under 35 USC Section 256 See https://www.law.cornell.edu/uscode/text/35/256. This is not a trivial undertaking so you would want to be sure that the benefits from winning justify the expense and effort. If you were working for someone when you made your contribution, it is quite likely that you had an obligation to assign your rights to the invention and thus you may not earn any royalties or other money from being named a co-inventor. You will need to review the context of your contributions and any relevant documents such as employment agreements to see if this makes sense.

Like many areas of the law, you cannot wait an indefinite period of time to sue once you are aware of the issued patent that did not list your name. So you need to consult with a patent attorney that has litigation skills soon to weigh the costs and benefits of moving forward on this.

If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at

https://lawyers.justia.com/lawyer/kevin-e-flynn-880338

Kevin E Flynn

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