Q: Dear Sirs/Madams, I found a patent filed on this website that is actually based on my own work. How do I proceed?

The patent in question is based on my Ph.D. work and has been subsequently published. I would like to be at least mentioned as an inventor since the innovation was mine.

The following public documents attest to me having precedence over the inventors listed on the patent:

1. My Ph.D. thesis

2. A publication on a pre-print server

3. A peer reviewed publication

2 Lawyer Answers
Kevin E. Flynn
Kevin E. Flynn
  • Patents Lawyer
  • Pittsboro, NC

A: You should consult with a patent attorney. This fact pattern happens from time to time as the work of a Ph.D. candidates get ignored when the patent application is filed after their graduation.

You will need to have a patent attorney compare the claims to your writings. It is possible that the claims address another layer of improvements that builds on your work. As your work is published, your work is in the public domain. If the patent application was filed after your work was published, then you may not be an inventor of the improvements as your contributions are taken as baseline knowledge.

There are ways to correct the listed inventors but this is not a DIY item. It is likely to require at least a well-written letter to the university.

Kevin E Flynn

Joshua David Mertzlufft
Joshua David Mertzlufft

A: There are mechanisms in the law to add an inventor when they should be listed (it is a common misconception that inventors can be arbitrarily chosen). I actually recently wrote a blog post about this topic: https://mertzlufft.law/did-you-really-invent-that-who-is-the-inventor-in-patent-applications/

This would take an analysis of the claims, your relationship to the invention that was patented, and the application that led to the patent to see if you should have been listed. Another possible wrinkle that exists is the timing of your publication, and whether it should have been cited as prior art against the patent.

I am a registered U.S. patent attorney, however, absent a mutually-agreed, written engagement agreement between you and my firm, I am not *your* attorney, and neither the contents of this message nor receipt thereof may be construed in any way as legal advice nor to form any attorney-client relationship.

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