I have a question concerning inventor status for patents.
I’ve come up with several ideas for the company I work for. They have filed patents in Holland and a few in the USA based on those ideas. However, I was told that I could not have inventor status on these patents, the CEO was put as the inventor. The CEO did little or did not contribute to any of the patents. The reason they gave me was that if I am part of the inventors of a patent, and if a competitor files a lawsuit against one of these patents, I might need to be summoned to court. I conceded to this as it made sense to me at the time. I hadn’t given it much thought, but now I am consistently helping to create new patents and it would be nice to get the recognition by having my name in the patents. I do not want to be assignee or owner of the patents.
My contract simply states:
“Employee need to disclose to the company details of all the inventions, processes and designs the employee might contribute during the terms of employee’s employment. All such inventions, processes or designs are the exclusive property of the company, whether they shall have been made or developed during working hours or otherwise or on the company’s premises or otherwise.”
What do you think? Is the reason they gave me valid? Or am I being cheated of my rights to inventorship? Where could I find more reliable information concerning this?
In every company I’ve worked for pretty much everyone that worked on the initiation of the idea is on the patent. I’ve never seen the CEO on a pattens personally. I’ve got a pattens in my inbox to sign today. The people listed on it are two industrial designers and a mechanical engineer. Does your company have an IP attorney? I’d ask that person what the legality of that policy is. Being listed on the pattens is not the same as IP ownership. That goes to the company.
FIY where I live the company is required by law to pay a sum of cash to all the inventors, equal to all. That is despite what is written in a contract, if you’re a consultant etc. If you generate IP you should be recognized, period. Engineers’ union thing.
I read in that Jony Ive biography that he was granted 2000+ patents each year. I mean… that’s 1 patent each working hour… somehow I doubt he was The Inventor.
But my understanding is that what your company is doing is entirely illegal and can invalidate the patent if all inventors are not listed. The question is, do you want to burn that bridge?
When I was a consultant, with one particular client, I used to enjoy looking at patent plaques on their walls where I wasn’t listed, utility and design patents, where I should have been listed. The reality of the matter is they gave me a ton of money for my work. Jeopardizing that to have my name at the patent office? Not worth it to me.
From my current job, I have about 30 of those plaques, I will be getting another 2 as I was told they issued last month. They will join the others in a box in the basement. I need less crap in my life, not more.
Also not a lawyer, but spent a lot of time dealing with IP law and learning about it. You didn’t formally state if you are based in the US, so these claims should apply only to US patent law (But also not a lawyer).
If you contributed directly to a claim on a US patent (or contributed to the physical design on a design patent), then you and everyone who made a meaningful contribution should be named. You specifically said the CEO did “little” and that piece of language is important. If he did ANYTHING that could be claimed as a contribution (for example, was he responsible for initiating the project to begin with? Did he provide input during meetings which crafted the final result as it is claimed?) if so - he would be entitled to inventorship.
The problem is, so should you and other peers who may have worked on the project IF they contributed to the claims as written.
Ownership you obviously sign away as soon as you join any company, that is standard practice.
The reality of this situation is you are most likely being screwed, but theres actually nothing other than pride on the line. You have no legal claim to any of the IP, and for the purpose of advertising you could always list the patent numbers on your Linkedin or resume if you made a meaningful contribution.
What your company is doing actually puts them in potential legal hot water, if they were to be sued by a third party who can claim to have contributed to the invention and NOT been named, that actually puts them at risk. Most people would never waste the time or money for such a law suit (unless there was considerable value), but in our case we would even name contractors and consultants on patents if they contributed to the designs, because they needed to legally sign away their rights to sue.
The US Patent and Trademark Office is very clear on this matter. Here is a link to the USPTO Manual for Patent Examination Procedure regarding inventorship: 602-Oaths and Declarations
Compensation is a matter for the company to decide and all of the rights to a patent may be assigned to the company, however, proper inventorship is a separate matter. All inventors must be listed in the patent application. In a patent where someone other than the inventor signed an oath stating that they were the inventor, the “inventorship” is incorrect. If an inventor is not listed as an inventor the inventorship is also incorrect. The USPTO is very clear about who is an inventor and who is not. One who did not concieve of the invention is not an inventor. A patent with incorrect inventorship can be overturned in an infrningement case for this reason alone. In short, a patent with incorrect inventorship is worthless. It is curious that a patent attorney would allow this practice to happen even once let alone become company policy.
Yes this is how I have been going about with it so far. It’s more of a pride thing, in the long term it would be nice to have it though. I did not know about them possibly getting into trouble, not that I would be interested in pursuing that. I will check with our patent lawyer if this might become an issue in the future. You’ve all given me some interesting inputs that I will verify, thank you!
Lesson learned: next time demand that you get listed.
At a company that I used to work for, the owner would always list himself as the inventor. Some people left because they felt they were shafted. One designer just asked to be included and the boss added him with another word.
It’s more than a “pride thing” and someone should inform the patent attorney. The rules for international patents are somewhat different than the US, however, the correct inventorship is still required. In the end the patents with a non inventor listed as the inventor and the inventor not listed may be invalidated very easily in an infringement case. You don’t sign away all of your rights in your employment contract as you cannot, for example, sign away the rights afforded you by the federal government. Here is an excerpt regarding the inventorship in international patents:
“Where the inventor is not the applicant, indications concerning the inventor must nevertheless be made in the Request where the national law of at least one of the designated States requires that the name of the inventor be furnished at the time of filing a national application (PCT Rule 4.1(a)(iv)).”
No this is only a pride thing. Saying that it is more than a pride thing is still part of the pride thing.
If it were not a pride thing, the only reason of wanting to be listed is if you could benefit commercially from the invention, which you cannot, because the IP is with the company. Legally, the inventor working for that company does not even exist. Only the company exists. The company has invented the invention, not the individual lemmings who all want their name to be signed onto the paper. Is it not true?
Personally I couldn’t care less about how many patents have my name on it if I can’t incorporate them into a businessplan where I am the legal owner of the IP. After all did you invent the invention, or did the thoughts come to you because you got incorporated in the company and the circumstances were right for the innovation to come into fruition. ‘Inventor’ is such a vague term. I don’t claim that my thoughts are mine, for that matter. In Holland I know the process is a bit more ‘democratic’ and usually also juniors have a chance to have their name assigned to the patent if they did solid work on it. Still again complaining when that doesn’t happen is only intellectual vanity.