In my last post I mentioned how your patent attorney might be leaving time bombs in your patent application and used the example of inserting paraphrases of your claims as a summary description of your invention. Another example is the failure to check inventorship after amending claims during prosecution or when filing a continuation or continuation-in-part application.
The patent office - well, really the court - is pretty picky about getting the proper inventors listed on the patent. Why? Because society believes that granting you a patent is giving you a valuable asset in exchange for revealing the secrets of your invention. If you weren’t an inventor, you shouldn’t be getting that valuable asset; if you left an inventor off, you are effectively stealing the asset from that inventor.
Determining who’s an inventor is often an overlooked step during final patent application preparation and prosecution. To be listed as an inventor you are supposed to have made an “inventive” contribution” to at least one claim. But that’s one claim as listed in the issued patent, not what you hoped to get when you filed! All of the claim “negotiation” that goes on between your attorney and the examiner can affect who is properly listed as an inventor. If your attorney doesn’t check back with you, just listen for the tick-tick-tick of a time bomb.
Things get worse when you file a continuation (or continuation-in-part) application. Many times on these applications you see the list of inventors repeated again and again, even years after the original filing. Such a list, particularly with a CIP (where new material has been added to support the new claims) should be a red flag to warn you of a possible hidden problem.
Note that a defective inventor list sometimes can be corrected if you show no ill-intent, but do you really want to get into that matter in the middle of an infringement suit? And that’s where it’s going to show up, or in a re-examination, since the patent examiner does NOT check inventorship; he or she only cares that the invention is patentable, not who invented it.
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