Be Sure to Include the Right Inventors on Your Patent Application

US Patent Search

If you don’t you can lose important patent rights!

by Intellectual Property Attorney Bill Honaker, The IP Guy

Failing to name all the inventors on a patent application can have serious consequences, leading to the loss of your patent rights. A recent case, Blue Gentian v Tristar Products, serves as a reminder of this important rule. In this case, the inventor who was not named ended up licensing his rights to another party involved in a patent lawsuit. This resulted in the loss of damages, an injunction, and the exclusive right to sell the product. It was a devastating loss of rights that could have been avoided with proper inventor naming. This case highlights the complexity and care required when identifying inventors.

The story behind the case revolves around a meeting that took place on August 23, 2011. Ragner Technology Corporation was seeking investors to bring its MicroHose product, an expandable hose, to market. During the meeting, Gary Ragner, the founder of Ragner, and several others met with Michael Berardi. The lower court found that Ragner had already designed several expandable hose prototypes, and was listed as a co-inventor on two issued patents related to expandable hoses.

Berardi, on the other hand, had no prior experience in designing or making hoses. However, he had watched a video about the MicroHose and came up with the idea for his own expandable hose after seeing it. Shortly after the meeting, Berardi filed a patent application for his expandable hose design. The court determined that Ragner had made significant contributions to the invention and should have been listed as a co-inventor.

To determine who should be named as an inventor on a patent, one must consider the concept of “conception.” Conception refers to the formation of a definite and permanent idea of the complete and operative invention. It’s important to include anyone who conceived any part of the invention, even in dependent claims.

To avoid the pitfalls of incorrect inventor naming, it’s crucial to properly identify all inventors and have them sign an assignment agreement. This agreement transfers their rights to a single entity, such as an individual or the company that will exploit the patent. Additionally, non-disclosure or confidentiality agreements can be used to protect the inventor’s rights, and any improvements resulting from collaborative meetings.

The Takeaway

The key takeaway from this case is that patent rights are valuable and must be protected. Careful consideration and documentation of all inventors involved in an invention are essential to avoid losing important rights. Don’t overlook the importance of correctly identifying inventors on your patent application and securing the necessary agreements to safeguard your rights.

 

Bill Honaker, The IP Guy

About the Author:

Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the forthcoming book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.

To get answers to your questions click here. To schedule a time to talk, you can access my calendar by clicking here, email Bill@IPGuy.com, or call me at 248-433-7381.

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