Unsigned Patent Application Question

May 24, 2006 8:01 AM

Hypothetically, what would happen if an inventor (one of several) did not sign a patent application?

Let's also say this hold-out is refusing to sign because he is no longer employed with the company filing the patent application. Furthermore this inventor was very clear that when he left in Jan 2006, that if he didn't receive his 2005 bonus, then he would not provide any support post-separation. If it matters, let's say the separation was voluntary.
I'm curious what happens to the patent application itself, as well as how much of an issue this causes for the company filing the patent.
Using google and the patent office web site (uspto.gov), I found that there is a checkbox to indicate an inventor didn't sign the application, but I couldn't find anything explaining the impact to the filing (if any).
I would be curious as to what advice people would have for this hypothetical inventor.

posted by forforf to Law & Government (9 answers total)

If it were an important enough invention and I were that hypothetical inventor, I'd worry about the company just deciding to bypass having me sign it and go through another channel, leaving me without my name on this important invention. If having that recognition would be important in my industry, I might sign it anyway, and work out the bonus stuff some other way.

But I can't provide any insight into what the impact of not signing it would have on the filing.
posted by limeonaire at 8:13 AM on May 24, 2006

I don't know about you, but when ever I've worked for a corporation I've had to sign a waiver which preemptively forked over the rights to all of my work to my employer. Those also included clauses where I promised to help them in filing patents even if I was no longer employed by them. Therefore, if I tried to do anything like what you're saying, I'd be in breach of contract and they could sue me.

They could also blacken my name so that no one else would ever hire me again. After all, future employers are going to go to them to ask what kind of employee I was.

I think that the hypothetical person trying to grandstand like this would be a hypothetical damned fool to do so, because he could hypothetically ruin his professional life that way.
posted by Steven C. Den Beste at 8:22 AM on May 24, 2006

If an inventor refuses to sign, it will cause at least a moderate pain for the company in terms of getting the application accepted for examination at the patent office, since they will have to file a petition. See here. I haven't dealt with this situation so I don't know if these sorts of petitions are routinely granted, but they might be. If the company omits an inventor from the application, with intent to deceive the patent office, the resulting patent would be invalid.

This is separate from the issue of who owns the patent application and resulting patent.

Hypothetically, I might advise the inventor to agree to sign off if the company pays the bonus owed. This is not legal advice and you are not my client.
posted by exogenous at 8:23 AM on May 24, 2006

Sure, if there's a contractual requirement, then you have to do it. But otherwise? Absolutely not.

The idea that a company would blacken your name for something that isn't contractually required is laughable. In fact, you should welcome such a situation, so long as the company isn't judgement-proof.
posted by I Love Tacos at 8:58 AM on May 24, 2006

The company is holding all the cards in this one. Said inventor had better see a lawyer if he or she wants to fight the company. The paperwork will be an added burden to the company, but is routinely administered by the PTO. The assignment is an issue of state law and the company will likely threaten to sue the inventor to force the assignment. See a lawyer.
posted by caddis at 9:42 AM on May 24, 2006

Adjusting the frame of reference a bit ....
- The invention is not earth shattering but is kinda cool.
- There is no contractual requirement to sign the patent application, all though the company does own the intellectual property (this is not in dispute)
- Company is not able to blacken the record. Documented post-termination accomplishments have far surpassed
any black-listing the company could provide. It is also possible that being black-listed by the company would actually improve things professional standing.

It was made clear (in email) on termination that there were open issues just like this and that if the company wanted support post-termination date, then some type of agreement would need to be reached. No effort was made to broach an agreement (other than an offer to stay, which while generous fell short compared to alternate opportunities). A couple months post-termination, an email request arrived that asked for signatures on a patent.

Thanks for the replies so far ... it's always nice to get some feedback to those late night musings of "what if" this happened ...
posted by forforf at 12:00 PM on May 24, 2006

Why burn your bridges? Word can get around, bosses change jobs too, etc. Sometimes ex-employees are given a consulting agreement for a few hours worth of time to review the application for accuracy and completeness, and to sign the papers. Is this a possible way out in which both parties can also save face? Actions taken out of spite usually don't work out very well in the end.
posted by caddis at 1:25 PM on May 24, 2006

Maybe try posting to the Intellectual Property Forums-- you might get some good answers.
posted by statolith at 2:30 PM on May 24, 2006

It sounds a little like they are ignoring all your enquiries about the unpaid bonus. That is totally unprofessional - you might even say childish bullying. Whatever settlement you eventually come to, even if you cave completely on the financial side and sign the application, at least get them to acknowledge that you have a position.

I dunno..
posted by Chuckles at 2:46 PM on May 24, 2006