Alpharetta, GA asked in Patents (Intellectual Property) for Georgia

Q: Hi, Can the inventor of a utility patent claim ownership of a patent if it was never assign to the applicant company?

Patent application #X was originally filed and later published in 2013 as I was employed by Applicant, I assigned it to them, patent was abandoned by applicant. I terminated my employment with them in January of 2016. They refilled the "same" patent in November 2018 but it got a different patent # and publication # (patent #Y) they kept me as the inventor.

What are my rights?


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

A: I am sorry, John, but it is very unlikely that you have any ownership stake in Patent #Y.

If patent #Y has issued, and it is pretty much the same as patent application publication #X, then Patent Application Y somehow claimed priority to X. It had to, because X would otherwise be cited against Y, and no patent on Y would be issued. If you assigned your patent application for your invention to the company, then you almost certainly assigned all rights to it, including rights to divisional, continuations, etc.

And even if you wouldn't have assigned the rights, they would have very likely gotten rights to it because you were their employee.

The only way to get the ownership of the patent is for you to buy it off them.

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