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   Author  Topic: Assignment not by all inventors  (Read 1560 times)
SciGuy
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Assignment not by all inventors
« on: Feb 17th, 2006, 10:12am »
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6 inventors filed a provisional and assigned their rights to the invention to the company they work for.  However, through either supidity or mistake (I can't tell which yet), one inventor involved in conception was left off the provisional.  There are no problems yet b/c the omitted inventor does not care about being left off.  Hypothetically, if the omitted inventor insists and being added to the provisonal or the subsequent non-provisional, what happens to the original assignment?  Is it invalid simply b/c not all inventors consented?  Does the omitted inventor have to contest the assignment somehow to invalidate the assignment?  Please assume that the employees of this company have NOT signed any previous agreement whereby inventions are automatically the property of the company.
« Last Edit: Feb 17th, 2006, 10:30am by SciGuy » IP Logged
Isaac
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Re: Assignment not by all inventors
« Reply #1 on: Feb 17th, 2006, 10:47am »
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IMO, The problem with the inventor being left off of the provisional *probably* means next to nothing provided that there was no attempt to deceive.  
 
If the non provisional ends up not adding subject matter that was not in the provisional, then it is possible to get away with not executing a new assignment when filing a non provisional.   If the non provisional does add additional claimed subject matter, a new assignment would be required anyway.   Whether or not the *any* of the inventors are obligated to sign the new assignment cannot be determined from the facts you give here.
 
In any event, absent a requirement to assign, the sixth inventor simply has the same ability to negotiate that he has always had.
 
The more important issue is getting inventorship correct on the non-provisional with respect to the claimed subject matter (as opposed to disclosed subject matter).   Your fact pattern does not go so far as to say whether there is an issue with claimed subject matter.   If this is not taken care of you have an issue with respect to validity as well as ownership.
 
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Isaac
SciGuy
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Re: Assignment not by all inventors
« Reply #2 on: Feb 17th, 2006, 11:55am »
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"Whether or not the *any* of the inventors are obligated to sign the new assignment cannot be determined from the facts you give here."
 
What info is needed?  The situation is this:  During a weekly meeeting, the omitted inventor had a new idea.  He described the basic details and the theory behind why and how it would work.  That sounds like conception to me.  The powers-that-be at the company decided it was a good idea and shortly thereafter gave the project to a team to reduce to practice.  The team made several changes, but all these changes stemmed from the omitted inventors core idea.  When the provisional went out, the named inventors consisted only of "the team."   In sum, given that the omitted inventors core concept is the basis for all inventions (i.e. all future claims in the non-prov), deleting claims would not remove the need for him to be named.
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Isaac
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Re: Assignment not by all inventors
« Reply #3 on: Feb 17th, 2006, 12:16pm »
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Maybe the confusion is that I phrased my answer from the perspective of the company rather than from that of the sixth employee.  
 
I don't see any obligation for the sixth inventor to assign.  Such an obligation could arise even without an explicit obligation to assign if the employee were hired to be an inventor.   Let's assume not.
 
If there is *any* material in the application that would support a patent application not including inventor six, I don't see how inventor six could claim that the assignment was invalid.   Maybe an improvement patent is possible that does not claim inventor six's work.  Further, even were that not the case, it is still possible that the assignment is effect to transfer the rights from the five inventors.   Finally, if the provisional is not used as the basis for a priority claim, the provisional is useless.
 
IMO challenging the provisional is a potentially futile effort for at least those reasons.
 
The best strategy would IMO be to negotiate with the company about the future non provisional or to attack the non provisional and any assignment of that property.    The company should realize that any patent they are likely to obtain would be worthless unless they acknowledge the true ownership and that at best their assignment would make them joint owners with the inventor.
 
All of that assumes that the conception was really a relevant conception.  I could suddenly announce at a meeting that TV would be more realistic if it could be viewed in 3d and could reproduce broadcast odors.   I would not necessarily be an inventor of the 3d television if the engineers at that meeting were able to accomplish that.
« Last Edit: Feb 17th, 2006, 12:35pm by Isaac » IP Logged

Isaac
JimIvey
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  jamesdivey  
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Re: Assignment not by all inventors
« Reply #4 on: Feb 17th, 2006, 12:22pm »
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Is the issue that an inventor wasn't named but should have been or that the unnamed inventor didn't assign his rights to the company?
 
If it were a real patent application, failure to name him would present a 35 USC 102(f) problem.  In a pretend patent application, I'm not sure that matters.  To fix that, all you need is to file a real patent application, claim priority on the pretend patent application, name all the real inventor in the real application and make sure at least one named inventor was also named in the pretend patent application.
 
As for assignment, it sounds as if the unnamed inventor would have assigned his rights if asked.  If so, when you file the real patent application, ask.  
 
Or did I miss something in the facts?
 
Regards.
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