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   Illegal patent extension from a french company
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   Author  Topic: Illegal patent extension from a french company  (Read 4263 times)
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Illegal patent extension from a french company
« on: Apr 14th, 2005, 6:15am »
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First, I will describe the situation. After that, I will ask my questions.
I need your advices to defend my own right in my patent!  
 
 
Situation
----------
 
My thesis was proceeded in the offices of a french institute that I call here by "B"  
in FRANCE and financed by other institutes.
"B" did not finance my work and I am not an employed by "B".
I invented a process which was patented in France.
 
According to the certificate of utility obtain in FRANCE, I am quoted as the first inventor.  
But two of my bosses are added as 2nd and 3rd inventors without any contribution for their share.
 
In addition, I did not sign any document even those who concern the transfer of right. Also, I did not
obtain any remuneration.
 
 
 
Questions
---------
 
I have just learned on Internet that the Institute B extended my patent in Norway (Nov. 2004) and the  
UK (Dec. 2004) without to inform me and obtain my agreement. In addition, the institute "B" changed the
inventors order and put one of their salaried (the boss) as the first inventor.
 
What should I do to defend my own right and stop this illegal extension?
Can you advise me please?
 
 
 
Last month, the institute have send to me two documents to extend the patent on the USA:
- Declaration and power of attorney for patent application
- Assignment.
 
 
I refused to sign these documents without renumeration and because  
the patent was deposited in France under the blackmail.  
If the institute "B" uses the same method as in Norway and the UK, what should I do to protect my own right in the USA?
 
Thank you for your help!!
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Re: Illegal patent extension from a french company
« Reply #1 on: Apr 14th, 2005, 10:37am »
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Well, I can only address the issues as they pertain to US law.  I don't believe there is any law in the US requiring you to sign the declaration and assignment.  To summarize, by signing the declaration, you make sworn statements regarding the accuracy of the patent application.  If the declaration states that "we" are original and "joint" inventors of the subject matter claimed, it's possible that you could be committing perjury (lying under oath) by signing the declaration if you truly believe the names listing on the declaration are inaccurate.  That could be a stretch -- I'm not sure one of the sworn statements of the declaration is that the inventors are named accurately.  More importantly, I'm not sure how the signing of a declaration would work, logistically, if the inventors themselves disagreed about the accuracy of the list of inventors.  
 
By signing the assignment, you would transfer all your ownership rights to the assignee named in the assignement -- presumably "B".  Any requirement that you sign the assignment would be in some contract somewhere (unless French law dictates otherwise).
 
One of the things that allows this to happen in France and Norway and not here (in the US) is that the US does not allow corporations to file patent applications -- only the true inventors can do so, and the true inventors must be natural persons (as opposed to persons created as a legal entity, e.g., a corporation).
 
In addition, US patents are invalid if they name the wrong inventors -- 35 USC S 102(f).  I have no idea if that's true in France and/or Norway.
 
I know that addresses only a small subset of your questions.  I hope it's helpful nonetheless.
 
Regards.
« Last Edit: Apr 14th, 2005, 6:47pm by JimIvey » IP Logged

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Re: Illegal patent extension from a french company
« Reply #2 on: Apr 14th, 2005, 5:52pm »
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Also in the US there is no legal significance to whose name
is first on the patent.
 
Having the correct names on the patent can be material to
patentability.  For example, the difference in names might affect whether a
double patenting rejection is proper or whether a 102(a) or 102(e)
rejection gets made in at least some hypothetical circumstances.
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Isaac
eric stasik
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Re: Illegal patent extension from a french company
« Reply #3 on: Apr 15th, 2005, 6:09am »
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brevet_blem,
 
"According to the certificate of utility obtain in FRANCE, I am quoted as the first inventor. But two of my bosses are added as 2nd and 3rd inventors without any contribution for their share."
 
A French Certificate of Utilty is a strange animal. It is a registered patent that is not examined until a dispute arises. It is not itself a utility patent in the normal sense. A certificate of utility is more of a provisional claim to a patent that has to be perfected in order to assert patent rights.  
 
Applicants have to file a regular application for patent within one year to obtain a regular French patent, or to pursue foreign patents with the EPO, US, etc.  
 
I'm not sure what French law says about inventorship, but France is a member of the EPC so it is probably the same.  
 
Article 60 EPC "Right to a European patent" says:
 
(1) The right to a European patent shall belong to the inventor or his successor in title. If the inventor is an employee the right to the European patent shall be determined in accordance with the law of the State in which the employee is mainly employed; if the State in which the employee is mainly employed cannot be determined, the law to be applied shall be that of the State in which the employer has his place of business to which the employee is attached.  
 
(2) If two or more persons have made an invention independently of each other, the right to the European patent shall belong to the person whose European patent application has the earliest date of filing; however, this provision shall apply only if this first application has been published under Article 93 and shall only have effect in respect of the Contracting States designated in that application as published.  
 
(3) For the purposes of proceedings before the European Patent Office, the applicant shall be deemed to be entitled to exercise the right to the European patent.  
 
So what this says is that fundamentally the right of a patent is given to the inventor(s), but in practice it is the applicant (in most cases the assignee) who is assumed as the owner.  
 
The Applicant only has to make a good faith effort to identify the inventors. The order in which co-inventors are listed has no significance - except for prestige. Not all inventors have to make an equal contribution. Determinative is that anyone that made a material contribution to at least one claim should be listed as a co-inventor.  
 
EPC Implementing Rule 17 Designation of the inventor  
 
(1) The designation of the inventor shall be filed in the request for the grant of a European patent. However, if the applicant is not the inventor or is not the sole inventor, the designation shall be filed in a separate document; the designation must state the family name, given names and full address of the inventor and the statement referred to in Article 81 and shall bear the signature of the applicant or his representative.  
 
If you didn't make an assignment, the applicant might be able to do this without you. This depends on your relationship with the applicant and is a matter of national employment law, and any industrial agreements.  
 
(2) The European Patent Office shall not verify the accuracy of the designation of the inventor.  
 
(3) If the applicant is not the inventor or is not the sole inventor, the European Patent Office shall inform the designated inventor of the data in the document designating him and the further data mentioned in Article 128, paragraph 5.  
 
(4) The applicant and the inventor may invoke neither the omission of the notification under paragraph 3 nor any errors contained therein.  
 
http://www.european-patent-office.org/legal/epc/e/r17.html#R17
 
It is not uncommon that as claims are narrowed in prosecution, one or more co-inventors are properly removed. Rule 19 "Rectification of the designation of an inventor" describes how to correct inventorship:
 
(1) An incorrect designation of an inventor may not be rectified save upon request, accompanied by the consent of the wrongly designated person and, in the event of such request not being filed by the applicant for or proprietor of the European patent, by the consent of that party. The provisions of Rule 17 shall apply mutatis mutandis.  
 
http://www.european-patent-office.org/legal/epc/e/r19.html
 
Unless the co-inventors are willing to agree to remove themselves, you face an uphill battle. Also, until the application is examined and a patent granted on specific claims, it will be difficult to make arguments about inventorship.  
 
Based on the few facts you have presented, it does not appear to me as though this is an "illegal" extension.  
 
It appears as the normal filing within the priority year.  
 
The same co-inventors are listed. That the order is different is meaningless.  
 
Until the patent is granted on specific claims, it is difficult to say who may be removed as a co-inventor.  
 
If you believe there is a substantial amout of money in play, and that you have rights in the invention that have been misappropriated, then by all means visit a French patent attorney, discuss your specific circumstances, and get some proper advice.  
 
regards,
 
eric stasik
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Re: Illegal patent extension from a french company
« Reply #4 on: Apr 15th, 2005, 9:25am »
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Let me please thank you all for your answer. you cleared up many points ambiguous to me.
I appreciate your help and the time that you devote to me.
 
If I have understood well, I see that I cannot do any actions without with a French patent attorney...
 
If we read this example, I deduce that "B" can take to LEGALLY apply for a patent in the U.S.,  
even if you refuse to sign any documents. :
 
"35 U.S.C. 118 Filing by other than inventor
Whenever an inventor refuses to execute an application for patent,  
or cannot be found or reached after diligent effort, a person to whom the inventor has assigned or  
agreed in writing to assign the invention or who otherwise shows sufficient proprietary interest in  
the matter justifying such action, may make application for patent on behalf of and as agent for the  
inventor on proof of the pertinent facts and a showing that such action is necessary to preserve the  
rights of the parties or to prevent irreparable damage; and the Director may grant a patent to such  
inventor upon such notice to him as the Director deems sufficient, and on compliance with such  
regulations as he prescribes."
 
 
Can you please resume to me some actions I can do in order to protect my owned right?
 
Best regards!
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