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Maverick
Maverick, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 5766
Experience:  20 years professional experience.
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I have an IP law question. I am working with someone that is

Customer Question

I have an IP law question.
I am working with someone that is filing a patent for a product design. The idea for the overall product is theirs, but there are design elements that are my idea. I have asked if I will be on the patent since I have invented some physical aspects. I was told, by email in Oct 2015 that of course I will be on patent. Yesterday I was asked to review part of the patent, my invention, and help to fix the wording. I noticed I am not on the patent. I asked if my name will be added and I was told that they are filing this the patent now because we will be shipping product soon. But this is just a place holder and they will do a separate patent for my invention. Now, my question is, how can my invention be patented separately after it is already included in this patent that does not include me?
Submitted: 8 months ago.
Category: Intellectual Property Law
Expert:  Maverick replied 8 months ago.

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Expert:  Maverick replied 8 months ago.

It appears that they are trying to steal your invention by filing for patent protection before you do. However, U.S. patent law is unique because it is based on a "first to invent" system rather than a "first to file" system. This means that as long as you invented first [and have the paperwork/proof to show this], you can petition the U.S. Patent and Trademark Office to declare an interference proceeding. Then, if you are declared the first inventor, the USPTO will invalidate their patent and declare you the first inventor. This will then give you the right to file for patent protection in your own name.

I would suggest that you gently let them know how the system really works and that they consider putting your name on the patent to avoid the time and expense of your filing of an interference proceeding.

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