What should I do: My ex-employer filed a patent for a product design I worked On without Listing me

I worked for this employer Until Mar 2020 as an in-house Mechanical Engineer. This was my biggest project as it was to design a family of products and the budget was over $ 1 million.

From Engineering only me and My supervisor ( Engineering Director) were involved. I was lead Engineer and spent several hours ( & sometimes overtime) going over different iterations and simulations to make the design work. I worked with the overseas vendor and came up with testing protocols and studies to ensure performance and safety as well. Conducted all the In-house testing, and was also responsible for the final production design.

Obviously, my supervisor was guiding me, but there were many times when this project was a high priority and I was asked to temporarily delegate all other projects.

2 days back while checking on the product online, came across the fact it has been granted Utility Patent. When checked the timeline, I noticed the provisional patent was filed Jan 2020 while the final patent was filed in May 2020

I am bumped and disheartened that I wasn’t listed as Co-inventor rather only my supervisor is listed.

Anyone here who went through such a situation? Should I

: Reach out to the company direct (Higher management and CC Manager as I am sure if I only reach out to him, he either won’t respond or will make some excuse to shrug it off), Or
: Hire a lawyer to review the case to see if i have legal grounds to be added as co-inventor and let him deal with the company rather than reaching out directly and sounding any alarm

Anmol,

I’ve had this happen to me as well. I don’t think there is anything you can really do about it.

What positive could come from hiring a lawyer? There is no financial benefit to being listed as the inventor. The company still owns the IP. So you will be out the money for the lawyer either way and now have a reputation for being litigious.

When this happened to me in the past I took note of it to make sure I was listed on patents in the future when I knew companies would be applying for them. As someone who is listed on a lot of patents I can tell you it isn’t that meaningful in everyday life. You still worked on the project, that is the important part.

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Thank you for responding and sharing your experience. That’s what i have been thinking.

In my case the major benefit it will have for me will be on my Immigration application, apparently listed on Patent is considered highly positive. That’s the only benefit i am able to see.

What about reaching out to the company directly? I Understand this varies based on the company, but in your case did you reach out to them directly to be considered later on?

ah, that makes sense for helping with the immigration application. It seems pretty unlikely they would go back and amend the filing, especially as the patent is granted. I’m not a lawyer but technically I believe everyone that contributed to the formation of the idea is supposed to be listed as a co-inventor.

It might be a good idea to just reach out to your former boss and say something like “I saw that xxx product was awarded a utility patent! I’m so proud to have worked on that project. Being listed on a utility patent would be vert helpful for my immigration case. I know it is unlikely at this point, but I was wondering if since I worked on the project if it would be possible to be listed as a co-inventor to reflect my contribution to the immigration board?”

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Anyone else with experience with patients have advice here? @Dan_Lewis @iab @Mr-914 @slippyfish @IDiot @designbreathing @FluffyData … I’m sure you have all been listed on many patents?

Many patents. To second Michael’s response - being listed as a coinventor really only strokes the ego, otherwise meaningless. I got mildly miffed once because one of my employees was listed ahead of me on the patent - alphabetically of course.

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I haven’t been in a position like that.

Combo of the two answers - try to get in touch with the company legal dept, the lawyer who did the patent filing. They would at least be interested in hearing your perspective, and you’d get some legal advice for free. However they might be in the position of simply defending the company’s interests.

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I appreciate all the responses. Based on @_yo’s initial suggestion, I just sent the email to the manager but I also included a few other key stakeholders as I am not sure if the manager will pay much attention as his name already exists on the patent.
Also, completely ruled out hiring a separate lawyer but will be very careful in future projects hereon.
Not keeping my hopes high, but will update this thread if anything positive comes out of the conversation.

What country was the patent filed? Makes a difference.

If filed in the US, as co-inventor, you actually have a lot of leverage. If not listed, by law, you can actually invalidate the patent. So if they see the patent having value, you can take that value away.

That said, you will be burning bridges. And it will cost you a pretty penny monetarily to bring suit. Simple question, is the juice worth the squeeze?

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So I got the response as expected.
According to the company’s lawyer, I contributed towards the tech part in later stages while what they claim on the patent is very broad and not specific to design updates I made.

Most importantly as per the lawyer claims are based on design ideas and work done even before I joined the company.

At this point, I don’t see any point in escalating it further and burning bridges. But for sure learned my lesson for a lifetime.
Did leave response for the lawyer:
" All I understand from your explanation is that to be listed all someone needs to do is come up basic concept, no matter if it works or not and they can claim to be an inventor. But the engineer who actually made it work can’t be. I keep coming up with new concept ideas very often, by your logic I can file a patent on all of them even if they would work or not"

Sounds a little rude, but I am bumped for sure. Like why did I or any engineer would even put any effort into making anything work if it won’t be considered for patent?

From Lawyer:

"All that said, Company ( and especially “manager”) appreciates your effort on the project and do not minimize your contributions to the final product.
(In any event, you should understand that development actions like doing CAD drawings and testing, while important, are unlikely to ever be enough for one to claim to be an inventor).

Edited: to remove company and manager name.

Something to consider…If I read your description of your contribution literally then you may have contributed to Trade Secret IP development rather than contributing to claims made in a patent. Patents are designed to protect original ideas whereas Trade secrets protect methods of manufacture and production techniques typically. It appears that you were heavily involved with bringing the companies’ design to production from your text description.

I’ve been through a few situations similar to yours. I currently have a few patents pending, but I’m honestly more concerned about a successful launch rather than my name on some IP that the company owns. I stopped listing patents on my CV years ago. As others have added, I’ve never heard of walking back a patent after issuance to change the listed inventors. If your immigration visa application ends up being rejected because you were not on that particular patent, then that is truly bs.

Be careful what you wish for. If the product ever fails in the field or causes a death, you will likely not be called to testify in a court of law. Reserve being litigious for later in your career, if at all.

Yes, that’s true I was definitely heavily involved in bringing the design to production.
Regarding Visa application, not having the patent won’t have a direct negative impact as overall profile matters. But definitely having one adds some positive impact.
I understand your last point as well, I have designed a few products that if failed can end up very badly around it.

For sure no plan to be litigious at this point, don’t even have much clear ground at this point based on what the IP lawyer mentioned. But for sure I am gonna be very careful with future projects

Sorry, didn’t see this earlier.

Not a lawyer, but my understanding is similar to way Yo stated, essentially if you were involved, but not included, that puts the patent at risk of being invalidated, BUT, as it was granted without you being included, any IP lawyer worth their salt will find a way to defend the filing as it stands. Which is where you now find yourself.

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Testing a concept or doing CAD work on a concept does not make you an inventor by any means. For example, if the idea is a hinge, the hinge is the invention. You “optimize” the hinge by making a titanium pin or a larger diameter pin or doing the CAD of it or running a test saying it will fail in 10,000 cycles, that stuff has nothing to do with the hinge idea itself.

Now if the concept was a hinge with a separate pin and you say the pin can be integrated into the flange so it isn’t a separate piece, then yes, you fundamentally changed the concept and if the lawyers include the integrated idea into the patent, then yes, you are an inventor.

But just working on a product that has a patent doesn’t automatically make you an inventor.

Because that was what you were paid to do!!! If you want credit, start your own company and do for yourself.

I understand that part. Only reason i contest was due to the changes i made. As you said it’s similar to coming up with a new way for hinge say 2 pins.

Agreed but also if you contribute a significant change in the working, in good companies you are considered for credit.

Starting your own business isn’t the only way

totally makes sense based on the response I received.

The company is putting the patent into jeopardy by not listing all of the inventors. They are falsifying the application which could result in loss of the patent. That seems like a bad situation for the claimed inventor, the company, and you. You have little to lose by bringing it to their attention, and they have have a lot to lose by ignoring you.

Wow! Cool idea- I wonder why nobody has thought of that before! Were you paid to say this or is it your own agency dedicated to posting really good comments?

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