What's the best way to correct inventorship of an issued patent?

[En-trance]

Hi all,

You have probably seen this hypothetical situation many times before:

An employee: X (e.g. a postdoctoral fellow) conceived an invention while working for employer: Y (e.g. his mentor who works for an university).
X resigns, starts his own company and immediately files for (and subsequently obtains) several U.S. patents naming himself as the sole inventor.
X then licenses the patent rights to Company A.
Employer Y finds out.
(assuming there is clear evidence that X had patented invention(s) that were conceived while he worked for Y)

My question is: What would be the best (most effective/efficient and cost-saving) way to go about correcting the inventor-ship of the issued patents? Is litigation the only way?
I'd appreciate any thoughts you may have. Thanks very much!
   

[Rabid Levity]

An employee: X (e.g. a postdoctoral fellow) conceived an invention while working for employer: Y (e.g. his mentor who works for an university).
X resigns, starts his own company and immediately files for (and subsequently obtains) several U.S. patents naming himself as the sole inventor.
X then licenses the patent rights to Company A.
Employer Y finds out.
(assuming there is clear evidence that X had patented invention(s) that were conceived while he worked for Y)

My question is: What would be the best (most effective/efficient and cost-saving) way to go about correcting the inventor-ship of the issued patents? Is litigation the only way?
I'd appreciate any thoughts you may have. Thanks very much!
   

Hi.  I am sorry and I may be missing your point, but from the above I do not see an indication that inventorship is incorrect. 

Are you really asking about forcing X to re-assign the patents from Company A to the former employer Y (assuming X was under a valid original obligation to do so)? 

Or did you mean to write that someone other than (or additional to) X should have been named as an inventor?  If so, note that inventorship and ownership are separate concepts, such that X having been under an obligation to assign to Y does not make of Y an inventor.  [Add for clarity: nor does "working under mentorship of Y" make of Y an inventor.]  Unless Y contributed to the inventive claimed matter.

[En-trance]

Hi.  I am sorry and I may be missing your point, but from the above I do not see an indication that inventorship is incorrect. 

Are you really asking about forcing X to re-assign the patents from Company A to the former employer Y (assuming X was under a valid original obligation to do so)? 

Or did you mean to write that someone other than (or additional to) X should have been named as an inventor?  If so, note that inventorship and ownership are separate concepts, such that X having been under an obligation to assign to Y does not make of Y an inventor.  [Add for clarity: nor does "working under mentorship of Y" make of Y an inventor.]  Unless Y contributed to the inventive claimed matter.

Thank you Rabid Levity, please let me clarify. We are trying to accomplish both: add Y as an inventor on X's patents AND reassign ownership of these patents to Y's university.
You are right that Y being the mentor of X doesn't automatically make her an inventor on X's patents, but there is clear documented evidence that X and Y conceived the invention together. The reason we also want to force X to re-assign his rights to Y's university, is because the claimed invention is supported by data (provided in the specification) that are generated while X worked in Y's lab, and he signed a contract agreeing that the work done while employed under Y belongs to Y's university. Thanks again RL!   

[OhioStateJD]

The reason we also want to force X to re-assign his rights to Y's university, is because the claimed invention is supported by data (provided in the specification) that are generated while X worked in Y's lab, and he signed a contract agreeing that the work done while employed under Y belongs to Y's university. Thanks again RL!   

That contract may itself assign X's rights to the University, but this is a fact-specific inquiry.  What does the contract say?  What are the facts on the ground?  Without insight into these two things, it is impossible to know whether the contract will govern.  Also, even if the claimed invention is governed by the contract, does the contract include the proper present assignment of future rights language (e.g., "I hereby assign my right to inventions that are within the scope of this contract" instead than "I will assign my right...")?

If the claimed invention is governed by the contract and the contract includes a present assignment of future rights clause, then it looks like your University already owns X's title.  If you are the University's counsel, you can simply prosecute the case (recording the contract as the assignment from inventor X to the University, changing the applicant, adding inventor Y, and recording the assignment from Y to the University).

If the claimed invention is governed by the contract but the contract only creates an obligation to assign, then you have three options: (1) ask X nicely to sign an assignment; (2) offer X something (e.g., money) in exchange for his assignment; or (3) if all else fails, sue X in state court for specific performance.

If the claimed invention is not governed by the contract, then you need to see if there are any state law remedies that would convey legal or equitable title to the University.  Things like the hired-to-invent doctrine (which varies in substance from state to state) or peculiar state laws (for instance, Ohio has the draconian ORC 3345.14) could possibly apply.  Barring availability of something like that, then in this eventuality the University has no right to X's ownership stake and would need to buy that right or settle for joint ownership (via Y's ownership share).

[En-trance]

Thanks OhioStateJD for your comments. We have pursued legal actions against this individual as well as the company that employed said person. The company that the individual works for has tentatively agreed (subject to further negotiations) to assign the rights of the affected patents back to us. Thanks again!