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[lajay]

I concieved a product idea in May 2006.  I forwarded a typed description of the idea to a schoolmate who became interested in helping me patent and market the idea.  In Oct. 2006 we filled a PPA for the idea undr both of our names.  I can prove I wrote the PPA while he helped me with the technical descriptioons and drawings.  Nevertheless, the PPA is in both of our names.

Now in June 2007 this former schoolmate wants to break off from me in order to develop, patent, and market the idea on his won.  He feels he can do this because we filled the PPA under both of our names.  Once I complete the full patent within the next two months, how likely am I to win an infringement suit based on a Record of Conception that is prior to our joint PPA?  i haven't yet reduced the invention to practice; however, I am in the process of doing that now.

[clarklawyer]

I concieved a product idea in May 2006.  I forwarded a typed description of the idea to a schoolmate who became interested in helping me patent and market the idea.  In Oct. 2006 we filled a PPA for the idea undr both of our names.  I can prove I wrote the PPA while he helped me with the technical descriptioons and drawings.  Nevertheless, the PPA is in both of our names.

Is your schoolmate a coinventor?  If not, what does "filed under both of our names" mean?   The details surrounding who wrote what part of the application are irrelevant.   The question is who invented what.

If "filed under both of our names" simply refers to an assignment of rights, then your ability to prove prior invention to the provisional is also irrelevant.   The assignment is an agreement to share patent rights and the details of that agreement determine what you are able to do with respect to the invention rights.

[Chris Rodgers]

When I say "filed under both our names", I am referring to the Provisional Patent Application.  I included both of our names on the Provisional Patent Application as coinventors.  

Beyond that we do not have an agreement on how to share rights.  So, are you saying that regardless of my documentation showing that the product was my idea, because we have the Provisional Patent in both our names, everything else is irrelevant?

[clarklawyer]

So, are you saying that regardless of my documentation showing that the product was my idea, because we have the Provisional Patent in both our names, everything else is irrelevant?

That's not quite what I'm saying.

I'm suggesting that if your schoolmate is not a coinventor you shouldn't file patent applications stating otherwise and then rely on proving that the initial filing was incorrect and possibly deceptive.

If you want to share an invention, there are other means of accomplishing a sharing that don't involve deceit.

[biopico]

I concieved a product idea in May 2006.  I forwarded a typed description of the idea to a schoolmate who became interested in helping me patent and market the idea.  In Oct. 2006 we filled a PPA for the idea undr both of our names.  I can prove I wrote the PPA while he helped me with the technical descriptioons and drawings.  Nevertheless, the PPA is in both of our names.

Now in June 2007 this former schoolmate wants to break off from me in order to develop, patent, and market the idea on his won.  He feels he can do this because we filled the PPA under both of our names.  Once I complete the full patent within the next two months, how likely am I to win an infringement suit based on a Record of Conception that is prior to our joint PPA?  i haven't yet reduced the invention to practice; however, I am in the process of doing that now.

What is your friend's motivation to become an inventor? Was it all about friendship?

If inventorship is wrong, you'd better correct it asap although it is not required for provisional app.

Inventorship with deceptive intent constitutes inequitable conduct, which will lead to invalidating your patent if you ever get a patent.  

[lajay]

So I have until Oct 2007 to complete my full patent application.  (The PPA was from Oct. 2006).  Are you advising that when I file the full patent within the next 2 months, I should file it under my name only?  Then if it is disputed in court, I prove that I was the original inventor?  

The reason I originally allowed my schoolmate to be designated as a coinventor on the PPA is because in order to build and test the product (It is a hardware and software product), I would need an electrical engineer.  He is an electrical egineer and although the products features and functions are my idea, I am not an engineer.  So, I included him as a coinventor on the PPA under the assumption that he would help me build and test the product in preparation for the full patent and getting investors, etc.  Would that constitute as deceit?

Now he wants to develop the product on his own and he is using the fact that he is designated as a coinventor on the PPA as a license to do it.  His expectation is that when the full patent is filed and the original PPA is referenced that by default he will be a 50% owner in the full patent as a "coinventor".  Now he wants to set up his own company to market the product using the argument that he is a coinventor.

[PA]

So I have until Oct 2007 to complete my full patent application.  (The PPA was from Oct. 2006).  Are you advising that when I file the full patent within the next 2 months, I should file it under my name only?  Then if it is disputed in court, I prove that I was the original inventor?  

The reason I originally allowed my schoolmate to be designated as a coinventor on the PPA is because in order to build and test the product (It is a hardware and software product), I would need an electrical engineer.  He is an electrical egineer and although the products features and functions are my idea, I am not an engineer.  So, I included him as a coinventor on the PPA under the assumption that he would help me build and test the product in preparation for the full patent and getting investors, etc.  Would that constitute as deceit?

Now he wants to develop the product on his own and he is using the fact that he is designated as a coinventor on the PPA as a license to do it.  His expectation is that when the full patent is filed and the original PPA is referenced that by default he will be a 50% owner in the full patent as a "coinventor".  Now he wants to set up his own company to market the product using the argument that he is a coinventor.

You appear to be under a number of misconceptions, particularly with the law on inventorship.  It is common for inventors to confuse inventorship with attribution or reduction to practice.  While others here may be able to provide additional, general guidance, you really should see an attorney to clear up specific issues.

[clarklawyer]

So, I included him as a coinventor on the PPA under the assumption that he would help me build and test the product in preparation for the full patent and getting investors, etc.  Would that constitute as deceit?

Perhaps your filing was a result of not understanding inventorship and was not deceitful.

Inventorship is determined by who conceived the subject matter of the claims.  While you may have conceived an invention, the claimed invention may include additional subject matter conceived by your engineers.  On the other hand, your classmates contribution might be solely reduction to practice activity and not inventive.   There's simply no way for us to tell.

One thing to remember is that a patent does not give a right to practice an invention.  It might well be that you can draft a patent drawn to your own invention that your classmate would need to license in order to practice the joint invention.

[lajay]

Thank you for all of your help.