Intellectual Property Forum The Intellectual Property Forum

Please login or register.

Login with username, password and session length
Advanced search  

News:

We are looking for moderators.  Message the admin if interested.

Author Topic: Multiple inventors, but only one inventor of amended claims  (Read 284 times)

Tabo

  • Full Member
  • ***
  • Posts: 98
    • View Profile

Any insight would be appreciated:

Inventors A, B and C file a patent application. A and B invented claims 1-10 and C invented claims 11-15.

A then dies and B and C are at each other's throats. B refuses to work with C, a decision cannot be made with regard to the office action and C files a continuation with claims 1-15 to gain more time to figure out what to do. A, B and C are listed as inventors in the continuation application. C listed himself as the sole applicant in the continuation, and the USPTO has accepted that so far.

As I understand it, the claims are determinant for deciding who is listed as the inventor(s). Although there is more material in the specification from all of the inventors, could C cancel claims 1-10, and pursue his own claims 11-15, and eliminate the other two inventors? Another continuation with claims 1-10 would ethically have to be filed to preserve the rights of B and A's estate.

Or should C cancel his own claims 11-15 and file them in another continuation?

Any other possibilities? Am I correct that only the current claims are relevant for determining the inventors in the application?

Thanks in advance for suggestions.
Logged

mersenne

  • Senior Member
  • ****
  • Posts: 490
  • David H. Madden
    • View Profile
    • Mersenne Law
    • Email
Re: Multiple inventors, but only one inventor of amended claims
« Reply #1 on: 10-04-17 at 01:38 pm »

I think you're right: inventorship of record should reflect the current claims.  Of course, claims can meander over the course of prosecution, but I've never seen inventorship updated at every response to OA.  Practically speaking, I think it only makes sense to worry about inventorship at filing and at allowance.

I don't see any problem with C filing his own continuation to pursue claims that he says he invented.  A's estate and B would want to watch what's allowed, to be sure that their contributions are not in the final claims.

I don't think there's any ethical duty to file claims 1-10 for B and A's estate.  Certainly, an attorney would want to advise them of the possibility of doing so, but they might decide not to proceed.  Or they could do the same thing C did: file their own continuation with claims 1-10, naming A and B as inventors, and prosecute separately from C.

(This has never happened to me, so I haven't researched it, but this is where I'd start from if I had to figure it out.  HTH.)
Logged
Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

still_learnin

  • Senior Member
  • ****
  • Posts: 359
    • View Profile
Re: Multiple inventors, but only one inventor of amended claims
« Reply #2 on: 10-05-17 at 11:43 am »

Any insight would be appreciated:

Inventors A, B and C file a patent application. A and B invented claims 1-10 and C invented claims 11-15.

A then dies and B and C are at each other's throats. B refuses to work with C, a decision cannot be made with regard to the office action and C files a continuation with claims 1-15 to gain more time to figure out what to do. A, B and C are listed as inventors in the continuation application. C listed himself as the sole applicant in the continuation, and the USPTO has accepted that so far.

As I understand it, the claims are determinant for deciding who is listed as the inventor(s). Although there is more material in the specification from all of the inventors, could C cancel claims 1-10, and pursue his own claims 11-15, and eliminate the other two inventors? Another continuation with claims 1-10 would ethically have to be filed to preserve the rights of B and A's estate.

Or should C cancel his own claims 11-15 and file them in another continuation?

What a mess.

Do you represent the assignee of the original application? Or do you represent one or more of the inventors?
Logged
The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.

Tabo

  • Full Member
  • ***
  • Posts: 98
    • View Profile
Re: Multiple inventors, but only one inventor of amended claims
« Reply #3 on: 10-05-17 at 12:36 pm »

Ultimately the inventors, but it's even more complicated than I have presented. I don't want to present more details than necessary here.

The central question is whether a continuation application can be reduced down to one inventor by narrowing the claims to his contribution. I'm pretty sure it can be, but I'm trying to anticipate unexpected problems.
Logged

Tobmapsatonmi

  • Lead Member
  • *****
  • Posts: 895
    • View Profile
Re: Multiple inventors, but only one inventor of amended claims
« Reply #4 on: 10-05-17 at 01:01 pm »

The central question is whether a continuation application can be reduced down to one inventor by narrowing the claims to his contribution. I'm pretty sure it can be, but I'm trying to anticipate unexpected problems.

I've done similar to specifically excise the contribution of a recalcitrant inventor (or rather his employer was recalcitrant), but it still lead to arguments.  Luckily, I had documented early interviews with him and the other inventors about particular contributions, and his was pretty discrete vs. the rest, so it was a pretty clean surgery so to speak.  In the end his employer agreed they had no claim on the patent application as then claimed, and I agreed to send them advance copies of amendments under CDA for their patent firm to vet.  Luckily I got the thing granted with only one small amendment they couldn't argue about.

Flipping the question the other way, I've also had to add a new inventor when surprise art forced us to narrow claim scope down to a particular embodiment in the spec that was not originally claimed.  The new guy was someone who joined the research team late in the game and I used some of his ideas in drafting the spec, and so flagged that area on my work copy as belonging to him.
Logged
 



Footer

www.intelproplaw.com

Terms of Use
Feel free to contact us:
Sorry, spam is killing us.

iKnight Technologies Inc.

www.intelproplaw.com

Page created in 0.103 seconds with 21 queries.