I had a provisional application with a partner. We let the provisional expire.Now he has filed an international pat excluding me
I had a provisional patent with a partner. I conceived the idea without any input from this partner. His only role in the provisional was that he helped me write it up for submission. We had a falling out do to the fact that he was not entitled to be on the patent. So I let the provisional expire. He has now filed for an international patent excluding me. Do I have any legal recourse?
6 attorney answers
You should speak to a Registered Patent Attorney. How do you know he filed a PCT? Have you seen it? If he made significant changes or improvements, he might in fact be an inventor. There are a lot of questions that need discussion. If he is not the true inventor, you may have recourse but this can only be determined after an evaluation of both the provisional and the PCT.
If you are in fact an inventor but not named in the patent application, yes, there are various expedients that you could discuss with a patent attorney. One is to file your own patent application. Another is to communicate with his patent lawyer, requesting that your name be added to the PCT application as an inventor and applicant. Another would be to run a lawsuit along the lines of Stark v. Advanced Magnetics.
Note that ownership of a patent is not necessarily the same thing as inventorship.
This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance. -Gerry J. Elman, J.D. Elman Technology Law, P.C. Swarthmore, PA www.elman.com
Sounds like you had filed a Provisional Patent application which by no means gives the listed inventors a "patent." Instead, the inventors got a filing date, patent pending status and a one year time limit to file a non-provisional application directed to the same invention. After the expiration of the one-year deadline, the inventors lose their filing-priority date. You may have some legal recourse in the litigation context and there might be ways to interfere or intervene in the pending application filed by your old partner. I recommend you consult a competent patent attorney/litigator in your area ASAP. The information contained herein shall not be construed as legal advice and there is no attorney-client relationship formed by virtue of it.
Q:"I had a provisional patent with a partner.
A: No you didn't, you at most had an application.
Q:"I conceived the idea without any input from this partner. His only role in the provisional was that he helped me write it up for submission."
A: So you are going to admit to filing a fraudulent patent application? If he was named as an inventor on the PPA as you imply, to now say he was not an inventor implies fraud on your part and his part.
Q:" We had a falling out do to the fact that he was not entitled to be on the patent. So I let the provisional expire. "
A: He appears to disagree to your version of "the fact".
Q:"He has now filed for an international patent excluding me. Do I have any legal recourse?"
A: Yes, perhaps. An application can be filed in the name of an assignee now in the US, so perhaps you are just confused. If you are a co-inventor, your attorney can take various steps to get your name added as inventor and/or to get the other named inventor removed. It is foolish to try to do that on your own. There is a major problem with the patent application if you were deliberately and fraudulently left off that could render it invalid if not corrected in the proper way.
I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.
Let me understand this. You committed FRAUD and you admit it here.
You should hire an Attorney ASAP.
I could explain my conclusion but I am afraid you would deeper into doodoo if you do not contact an Attorney with whom you can discuss things confidentially. You cannot use a free attorney because of your confession, you MUST hire an attorney to preserve whatever issues you did in addition to the confession.
USPTO Registered Patent Attorney, Master of Intellectual Property law, MBA I am neither your attorney, nor my answers or comments in AVVO.com create an attorney-client relationship with you. You may accept or disregard my free advice in AVVO.com at your own risk. I am a Patent Attorney, admitted to the USPTO and to the Florida Bar.
Short Answer: Perhaps! In the U.S., applications can only be filed in the name of the true inventor. If he has filed a PCT, you should consider consulting an attorney to see what your rights are. Good Luck.