When employees have a falling out with their employers, concerns
can arise if the employee is named as an inventor in a pending or
soon-to-be-filed patent application and they are either unwilling
to sign documents or unavailable. In some cases, former employees
may attempt to use their refusal to sign as leverage in a dispute
with the company, or as the basis for additional compensation. A
similar issue may arise if an employee becomes seriously ill.
Fortunately, there are mechanisms available within the patent
system to deal with these situations.
In the United States, each inventor named in a patent
application must sign a declaration when the patent application is
filed (or soon after). Under the current law, however, it is
possible for the owner (or other joint inventors) of a U.S. patent
application to continue without an inventor's signature. To
proceed, a petition needs to be filed that sets out proof that the
non-signing joint inventor (1) refuses to sign, or (2) cannot be
found or reached after diligent effort.
Satisfactory proof that an inventor refuses to sign generally
requires some sort of documentary evidence that the inventor
received a full copy of the application papers and refused to sign
the declaration. For example, if corresponding by email, a reply
from the inventor saying "I received your email but I
won't sign anything until you pay me", or something to
that effect, can be sufficient. A supporting affidavit may also be
submitted, for example, by a supervisor who makes contact with the
former employee and asks them to sign the declaration.
On the other hand, the test for the second scenario tends to be
judged according to lower standard. It must be shown that
reasonable attempts were made to locate the person and ask the
person to sign. For example, an excerpt from an online telephone
directory showing the person's current address, along with
courier tracking information for a package containing the
application papers and a statement that no reply from the inventor
was received, can be acceptable. If an inventor is unable to sign
for medical reasons, an affidavit from their doctor advising that
they are not available to sign can also be used.
The petitions are examined by the Office of Petitions, which is
a specialized section of the United States Patent and Trademark
Office (USPTO), and must be accompanied by a small fee, the last
known residential address of the non-signing inventor, and the
declaration signed by the other inventors (if any). With some
investigation work and appropriate documentation, most petitions
are accepted, and no further contact with the non-signing inventor
is necessary.
The recently enacted Leahy-Smith America Invents Act
(AIA) is making sweeping changes to U.S. patent law. Among the
changes, the AIA includes provisions aimed at simplifying the
current declaration practice, which will be effective September 16,
2012, and will apply to any patent application filed on or after
that date.
It should be borne in mind that the declaration is a procedural
requirement in the U.S. and is distinct from the question of patent
ownership. Companies should operate to ensure that they can prove
ownership of their employees' developments. It is recommended
that employment agreements make it clear that ownership of all
intellectual property developed in the course of employment vests
with the company, and the employee is obligated to cooperate in the
prosecution of patent applications, with this obligation surviving
the employment relationship. Furthermore, as a matter of policy,
employees should be directed to execute assignments as soon as
practically possible, preferably on the filing date of a patent
application, or even earlier when an invention submission form is
initially presented.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
Specific Questions relating to this article should be addressed directly to the author.
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