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[brevet_blem]

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!!

[JimIvey]

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.

[Isaac]

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.

[eric stasik]

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

[brevet_blem]

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!

[JimIvey]

Can you please resume to me some actions I can do in order to protect my owned right?

First, while B can legally file the application, they won't own it unless you sign the assignment.  So don't sign it.  If you've already promised to assign it in a legally binding manner (e.g., in an employment contract), I believe they don't need your signature on the assignment, although title would be less clear and the marketability of the patent would be somewhat reduced.  

In terms of proceeding without inventor signatures, the most frustrating situation for me is when the inventor doesn't outright explicitly refuse to sign but rather says s/he'll sign but never quite gets around to it as the 6-month deadline passes.  I haven't quite got there yet (close at times), but I always thought I'd argue for constructive refusal if the paper had not yet been signed by the 6-month deadline.  At the very least, it raises the costs for B.

Of course, this isn't legal advice and I'm not suggesting any particular course of action, but the most challenging scenario -- hypothetically -- for a company in B's position is when the inventor says he/she will cooperate but they don't.

Another interesting scenario would be if the inventor signs the declaration and says, quite explicitly, that "I want the application to go forward, but I will not assign my share to you."  It may be possible to infer an acknowledgment that the assignment was appropriate and should have been signed if the inventor treats the assignment and declaration as a package and refuses to consider either document on the same grounds -- e.g., refusal to cooperate.  I thnk it's really a stretch, but people will try any arguments they can if the stakes are high enough.  By cooperating on the declaration and not the assignment, the inventor would seemingly negate such an inference.  

I have no idea how any of this plays out in countries outside the US.

Regards.

[brevet_blem]

Hello,

It's me again.
I need your advice !

I have just received a letter from the office of petitions concerning the patent. The contents of this letter are:

"You are named as a joint inventor in the above-identified United Slates patent application filed under the provisions of 35 U.S.C. 116 (United States Code) and 37 CFR 1.47(a), Rules of Practice in Patent Cases. Should patent be granted on the application you will be designated therein as a joint inventor.
As a named inventor you are entitled to inspect any paper in the file wrapper of the application, order copies of all or any part thereof (at a prepaid cost per 37 CFR i.19) or make your position of record in the application. Alternatively, you may arrange to do any of the preceding through a registered patent     attorney or agent presenting written authorization from you. If you care to join the application, counsel of record (sec below) would presumably assist you. Joining in the application would entail the filing of an appropriate oath or declaration by you pursuant to 37 CFR 1.63.
Requests for information regarding your application should be directed to the file Information Unit at     (703) XXX-XXXX.   Information regarding how to pay for and order a copy of the application, or a specific paper in the application should be directed to Certification Division at (703) XXX-XXXX or                              1-800-XXX-XXXX (outside the Washington D.C. area)."


That's mean that the institute "B" imitated my signature? I didn't sign any document.

What should I do please?
Thx

[JimIvey]

Here's 37 CFR 1.47:
http://www.bitlaw.com/source/37cfr/1_47.html

What that means is that B was able to convince the USPTO that the Declaration was offered to you and you refused to it.  B is now able to proceed with your patent application without your cooperation.

Regards.

[brevet_blem]

Thank you JimIvey for your answer.

If I understood well, "B" can exploit this patent with or without me. Moreover, all the benefits collected by this patent will be only to "B"??

If yes, how I can stop this fraudulent deposit.

Thank you.

[JimIvey]

At this point, I'm not sure there's anything you can do.  Later, when the patent is issued, you might be able to participate in litigation that might influence the protection afforded, if any, by the patent.  Until then, there's not much I can think of at the moment.

Sorry.

[brevet_blem]

I looked at the USPTO website, the patent was issued in October 2005.
What I can do now?

Does a limited time to assert my property of the patent in the United States after the date of the publication?
Thx

[brevet_blem]

That's mean that I can't do nothing to protect my right in my own invention?

[Isaac]

You have options for pursuing your rights in the invention, but
but most of those options do not involve the patent office.

[brevet_blem]

What kind of options and how?
I must act in France against this fraudulent deposit or in the USA?

[brevet_blem]

I will paste here the informations who appear in the first page of the patent issued in the US:
%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%
Inventors: Me; 2 others persons
Correspondence Name and Address: An attorney in the US

Serial No.: 00xxxx
Series Code: xx
Filed: Month x, 2004

U.S. Current Class: xx/xx; xxx/xx
U.S. Class at Publication: xxx/xxx; xxx/xxx
Intern'l Class: G01N 031/00
Foreign Application Data
Date Code Application Number
Month , 2003 FR xx/xx.xxx
%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%

That's mean the patent is issued solely in the name of the inventors or is issued to an assignee?

for information, the foreign application data (in France) was issued in the name of "B" ( I did'nt sign any document. It's a fraudulent deposit).