Should my phd grad student fiance be on top of her patent rights?

I have a concern for my fiance in the patent process for her phd.  She does not take an active role in the patent process and her 'boss' (the professor she works under) has told her there is a possibility she won't be on the patent (and she has done all the work in the invention).  She is the laid back type and not concerned about it but I want to try advise her to be on top of it. What rights does she have and should she make sure that she is the primary contributor to the patent invention?


Asked about 8 years ago in New York
Categories: Patents, Trademarks, Copyright

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Lori Hardaway

Answer by Lori Hardaway

VerifiedMissouri lawyer


To be an inventor, one must contribute to the conception of the invention. Conception is the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention.  A person that executes, experiments or works on the invention (i.e. the “reduction to practice” in patent parlance) without contributing to the conception of the invention is not an inventor.
 
Inventorship is a legal determination. Unlike an academic paper, professional courtesy and protocol play no role. So unlike a scientific publication, the contributions of technicians, grant writers, and other supporting persons play no role unless they contributed to conception.  Also, the listed order of inventors has no legal significance.
 
An inventor need only contribute to the concept of a single claim; a contribution to every claim is not required.  Because claims are often amended or canceled during patent prosecution, inventorship can change during the prosecution of a patent and patent attorneys have mechanisms for adding and deleting inventors.  
 
Although inventorship has been called one of the “murkiest concepts in the muddy metaphysics of patent law,” in the vast majority of cases, inventorship, for the inventors, is little more than bragging rights.  Owners of a patent (or patent application) control the patent (or application).  Only owners can communicate with the Patent and Trademark Office during patent prosecution.  The patent owner may license or sell the patent.  Generally, ownership is assigned by the inventors to an employer such as a company, university or governmental entity as a condition of employment.  An obligation to assign any invention is generally part of any employment contract.  Mechanisms exist to establish ownership in the event of an unavailable or uncooperative inventor.
 

Posted about 8 years ago

Lori Hardaway, PharmD, PhD, Esq Director, Averture Licensed in California and District of Columbia

Please note that this is for informational purposes only and does not constitute legal advice to you. Legal advice pertaining to your particular situation can only be provided by a lawyer who has met with you to obtain all pertinent background information necessary to give you a formal legal opinion. For formal legal advice, hire a lawyer (many give a free first consultation). Contact Lori Hardaway, or search the Lawyer Directory.


James R Coleman

Answer by James R Coleman

VerifiedWorldwide lawyer


Lori - Good answer with one correction.  You stated that only owners can communicate with the PTO.  Add attorneys with Power of Attorney in the case.
As to the question itself, as Lori points out, your fiance may not be an inventor.  If she is an inventor, she may have political reasons for not pursuing the patent.  One might be that the university owns the rights so why should she make any effort on their behalf.
If you are correct that she has done "all the work" on the invention, including conception, then the patent could be declared invalid if she is not included as an inventor.  The case - like most - will turn on the facts.

Posted almost 7 years ago

Please note that this is for informational purposes only and does not constitute legal advice to you. Legal advice pertaining to your particular situation can only be provided by a lawyer who has met with you to obtain all pertinent background information necessary to give you a formal legal opinion. For formal legal advice, hire a lawyer (many give a free first consultation). Contact James R Coleman, or search the Lawyer Directory.

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