Patent Law question

That is correct. Some have been issued, some are still just applications

My main interest is with the utility patents because of future employment opportunities and to aid in getting my PE since I don't work under one.

I understand it is just forum talk. I need to decide what I want to do

FWIW, I substantially contributed to a development several years ago that led to a patent. I was not included on the patent, even though I felt I should have been. I was a rookie then and didn't want to raise a stink, so I kept my mouth shut. Looking back, I think keeping quiet was best for me. But to each their own. Having a patent can be powerful.

Excellent advice. My company lists me as inventor on the patentable invetions I produce for them. It's good for my career and good for employee morale.

If your employer is reasonable they will do the same for you if you ask.

Also, see if you can talk to their attorney about it. You do know who that is, right? The attorney surely talked with you before filing? If not, maybe it's a sign that you really aren't the inventor.

If you are an innovator, you need to be listed on the patent or the company risks having the patent invalidated. Since you and the other innovators probably assigned your patent rights to the company, the ownership of the patent is not under question.

To determine if you should be listed as an inventor, you need to look at the individual claims. If you can find at least ONE claim and make the case that you contributed to that claim, then you must be listed on the patent application as an inventor. Hopefully you have some documentation (emails, lab notebook, witnesses, etc) to substantiate your position.

There is a way for the company to correct the inventor list depending on whether the patent has actually issued or is still under prosecution. That's the company's responsibility to correct this.

Just for the record, I am a patent agent registered with the USPTO.

Fat hurts wrote:

If your employer is reasonable they will do the same for you if you ask.

Also, see if you can talk to their attorney about it. You do know who that is, right? The attorney surely talked with you before filing? If not, maybe it's a sign that you really aren't the inventor.

^^^^Good advice^^^^

Muffy wrote:

However, I am not listed as an inventor on any of the patents even though I designed its likeness, drew it and modeled it. The owner of the company is listed as the inventor.

Did you ask the owner if you could be listed as a co-inventor?

We just had patent attorney come talk to our senior engineering class on this kind of stuff. What i got from his lecture was if you sign the contract about the intellectual property then:

1. Anything you invent during your time with the company they have all rights to profit from it. If you go home and invent something completely unrelated to your job it is still theirs. The last part surprised me a bit, but when the lawyer explained it made more sense.

2. They own all rights regardless of listed inventor. If you are the true inventor your name should be on the patent as an inventor.

3. Even if you were listed as the sole inventor it gives you no rights. They can use, sell, rent your invention and you have no say in it. The important part of the patent is not the inventor but who gets the right to profit.

I should add that the attorney emphasized two other points:

1. Patents are generally good for your career even if they are just for show.

2. If a patent "lies" about the inventor then it can voided. Though its fairly easy to amend with the right paperwork.

BTW, I think patents should be abolished. They do more harm than good.

My company puts all of its patents in the public domain and I agree that is the way it should be for everyone.

Just wanted to clarify:

If you are employed to invent or used their resources to invent, then they can have the rights over the IP. However, if you were tinkering in your basement on another invention, never used their resources, and didn't get the idea through the course of working for the company, they have NO rights over it.

Also [nitpick], an assignment goes beyond just the right to profit, it includes the right to dispose of the patent as you would any piece of property (sell, license, devise, give away, etc)

Fat hurts wrote:

Also, see if you can talk to their attorney about it. You do know who that is, right? The attorney surely talked with you before filing? If not, maybe it's a sign that you really aren't the inventor.

I do have the attorney's information. I actually got the attorney's contact information intentionally a couple of days ago for this reason. He has always tried to shelter the employees from contact with lawyers. Typically it will be the attorney asking my boss for info who in turn asks me for the info and relays it back to the attorney. He does the same thing with some of our suppliers for parts we need for projects. I have always been skeptical about this practice but have blown it off. Now I'm beginning to think this is all intentional. I wonder if it is intentional that the lawyer always calls me a draftsperson even though I most definitely contribute more than that?

Now, say that he is not willing to add me to the patents. Does the burden of prove land on me that i contributed to the patent claims or does it land on him to prove that I didnt?

I want to be clear, I have never signed anything with the company. Nothing. It was a start up that i joined 3 months in before any protocols or processes were established. He may have just forgot i haven't signed a non compete or ip document or anything like that.

I plan on asking him about the situation, in person, when he returns from a business trip next week.

Fat hurts wrote:

BTW, I think patents should be abolished. They do more harm than good.

My company puts all of its patents in the public domain and I agree that is the way it should be for everyone.

I doubt this is what they actually do. There is a procedure with the patent office where you can irrevocably disclaim your patents. I doubt your company has done this. Elon Musk, for example, claims he's "giving" his patent to the public domain and won't assert them against those competing "fairly." But, that's only as good as his word and as good as what he deems "fair." I looked into it a little and I could not find any Tesla patents or other Elon Musk patents that had been disclaimed.

Those who think patents do more harm than good fall into three categories:

1. Large companies in fields with low barriers to entry (e.g., Google). The low barriers to entry negate the advantage large companies have. Notice that you don't see the big consumer products companies taking the same anti-patents stance that google takes.

2. Companies who are into luxury items, and don't really innovate. Believe it or not, this is Tesla. Panasonic makes all of their batteries. Tesla is a luxury product more interested in making electric cars cool. They may be trying to do so for good reasons, but they're not an innovator in the tech side of the batteries.

3. Small inventors with short product cycles. Think app developers. They have no need for patents since they're on to the next thing before the patent office gets around to issuing them a patent, and they want to make sure they can make their next thing regardless of whether or not someone had the idea first.

1. Did you just say that Google is anti-patent? Really?

2. Common sense: just because a company has another make batteries for them doesn't mean they don't innovate. Anecdotal evidence and back-door brag: I have a couple buddies from my PhD program at a top engineering school who do R&D at Tesla. Are you telling me they are just sitting on their hands all day?

3. Also, apps are unlikely to be patentable as software, more likely to be under copyright. Also, you would always want patent rights if possible because it allows you to sue others down the road or sell your patents to companies (like Google) for lot's of money. Almost all electronics have short product cycles but do you really think Intel and Samsung don't get patents because of that?

There is a lot of information being thrown around here, some of it correct, some of it wrong and some of it incomplete. Following is not legal advice and you should not rely on it, but here are some general principles.

Regarding who is listed as an inventor on a patent, that is a question of who conceived of the invention, where the invention is what is claimed in one of the patent claims. Hypothetically, if person A (the boss) has an idea, explains it to person B (an employee), and person B creates drawings, prototypes, models, descriptions, etc., it is possible that person A is an inventor and person B is not. It is also possible that person B is a co-inventor with person A. It is also possible that person A is not an inventor at all and only person B is. It is a question of who conceived of what is claimed in the patent. It can be a complicated thing to determine and the focus is specifically on what is claimed. For example, if the claim in a utility patent is directed to specific details of the prototype that person A did not think of, person B may be the sole inventor. If the claim in a design patent is directed to ornamental features of the invention that person A did not think of, then person B is an inventor. If person B merely reduced to practice an idea that person A conceived of, than person A is an inventor and person B is not.

Bottom line is that I would not rely on guesses from anonymous internet posters as to whether you should have been named as an inventor.

The impact of failing to name an inventor can affect a patent's validity if the patent is enforced. However, if the inventors were wrongly named without deceptive intent, it is not that difficult to fix. Everyone will need to agree on who the correct inventors are and appropriate papers can be filed with the Patent Office to name the correct inventors.

Patent ownership is different from patent inventorship. A patent is a property that can be assigned from one party to another. An inventor owns all the rights in his or her patent. However, if an inventor works for a company, usually he or she signed an employment agreement that the company owns patent rights, so the rights are automatically assigned to the company. Even if you didn't sign such an agreement, the company may be within their rights to say that you must now assign your patent rights to the company as a condition of continued employment. (Maybe not; it depends). Also, there may be certain "shop rights" that the company has in the patent to practice the patent even if an inventor refused to assign it. There may also be state statutory law that applies to these ownership issues. By the way, even if you work for a company but come up with something at home, on your own time, unrelated to your work, chances are that the company does not have rights.

Here are some things you could do. Again, this is not legal advice and you are not my client. These are just possible suggestions:

1. Do not post specific details about your situation on this board or in public unless you have thought through the impact of your comments becoming public. General comments, fine.

2. Consider talking to the patent attorney who filed the applications. Tell him or her you are interested to know how he or she decided whom to name as inventors. Do this by a polite phone call or in person meeting. You likely will be asked if you think you should have been named as an inventor and, if so, why. The patent attorney wants to get it right and likely will ask you lots of specific questions about your conception of and contributions to what is in the patent claims. A patent attorney would have no incentive to name the wrong inventors. If you are an inventor, you probably will be asked to sign an assignment.

3. However, keep in mind that the company's patent attorney is not your attorney, most likely The company's patent attorney has a duty to the company and may not have a duty to you. So, if you have concerns about why you were not named as inventor, consider talking to your own patent attorney, not the company's patent attorney.

4. Most attorneys don't know much about patent issues, so if you think you need to talk to your own attorney, I would suggest you talk to a patent attorney, not a general attorney.

5. If you have patent ownership questions, consider talking to your own attorney. This is not legal advice, it is practical advice. Think about your bosses reaction if you say: (a) I am an inventor , (b) I never assigned my rights to the company, (c) therefore I am a patent owner, and (d) I refuse to assign my rights to the company.

booboomagoo wrote:

1. Did you just say that Google is anti-patent? Really?

2. Common sense: just because a company has another make batteries for them doesn't mean they don't innovate. Anecdotal evidence and back-door brag: I have a couple buddies from my PhD program at a top engineering school who do R&D at Tesla. Are you telling me they are just sitting on their hands all day?

3. Also, apps are unlikely to be patentable as software, more likely to be under copyright. Also, you would always want patent rights if possible because it allows you to sue others down the road or sell your patents to companies (like Google) for lot's of money. Almost all electronics have short product cycles but do you really think Intel and Samsung don't get patents because of that?

1. Yes I did say Google was anti-patent. And as a result they were very much behind other companies in terms of patents. They are now attempting to acquire them for defensive reasons, but are still anti-patent. You can read between the lines in the attached blog from few years ago.

2. Perhaps "don't innovate" was too strong, and I don't think your friends are sitting on their hands all day. But Tesla's marketing strategy is clearly in the luxury world. They've built a sports car and a luxury sedan, and they've designed an SUV with gullwing doors. They innovate in the same way BMW and Mercedes do for their cars.

3. You're exactly right about app makers who really just automate human behavior. I threw them out there as they're the modern day equivalent of the garage tinkerer. I also have the Congressional testimony of Todd Moore, an app maker, on the brain. That said, software is not per se unpatentable. Small inventors, until they've been turned down for funding, are still likely to be anti-patent because they will probably be on to the next thing by the time they receive their patent. Samsung and Intel are not small inventors. I can all but guarantee you I know more about Samsung's patenting practices than you.

This pretty much covers the current state of affairs with Patents and why 99% of them need to die.

What happens is a larger company litigates poorly financed competitors out of the business by launching consecutive IP lawsuits until the lawyer bills outstrip revenue. Copyright and Trademark are similar anti-competitive weapons.

Did anyone know you can now Patent stories? Yes, Romeo and Juliet can be patented.

runDirtyrun wrote:

This pretty much covers the current state of affairs with Patents and why 99% of them need to die.

https://www.youtube.com/watch?v=3bxcc3SM_KA

What happens is a larger company litigates poorly financed competitors out of the business by launching consecutive IP lawsuits until the lawyer bills outstrip revenue. Copyright and Trademark are similar anti-competitive weapons.

Did anyone know you can now Patent stories? Yes, Romeo and Juliet can be patented.

So is the problem non-practicing patent trolls like John Oliver says, or is it the big companies and their repeated lawsuits?

And you may be the first person I've ever heard complain about trademark.

No, you cannot copyright stories.

I'm pretty sure nothing you've said here makes sense.

hbzns s wrote:

No, you cannot copyright stories.

Oops, I meant to say you cannot patent stories.

I appreciate an intelligent response, it's very refreshing.

1. I think Google's anti-patent "stance" is marketing PR:

2. I don't strongly disagree with your Tesla position, but you I do think that a lot of the innovation that trickles-down to later technology is prompted by companies with a "luxury" tiers and "consumer" teir. A lot of the innovation does go into "luxury" markets first.

3. We can agree to disagree about the utility of patents. I feel that small companies can use them to leverage/sue larger companies with greater resources. If there were no patents, the big boys would just trample everybody else. I am sure you are in a position to understand Samsung's process, but you probably know you aren't the only one to have them as a client in the patent game. Are you in-house counsel? If so, I'd love to chat. [seriously].

Also, does anybody think that the market could sustain huge R&D losses without some form of patent protection? Would pharma companies put billions of dollars behind drugs if they knew a generic could produce it for pennies without any form of IP? Would Toyota have worked on hybrids if all you had to do to compete was reverse engineer? Patents aren't perfect, but I don't think abolishing them would make much sense at this point.