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
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
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.
Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.
The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.
Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.