Can the same patent be extended to a new country without one of the original co-author


Back in 2017 I signed a patent contract with the company in which I used to work as one of the co-authors of an invention that was going to be patented in Europe. In this contract I was forced (otherwise I was going to be fired and I couldn't afford to lose my job at the moment) to renounce to any property over the invention. In turn the company compromised in the contract to recognize me as one of the author's of the patent. A while after I left that company, because my relationship with it wasn't the best . Today, they contacted me saying that I need to sign another document full of terms that I don't agree with, for them to be able to extend the original patent to United States. The difference is that this time they can't say they will fire me if I don't sign. So instead they are saying that my name won't appear as one of the co-authors in United States. Would this be possible? A patent with less authors in US than in Europe? Wouldn't they be breaking the first agreement they made to recognize me as a co-author?


Posted 2019-02-05T01:49:06.637

Reputation: 113

The standard employment agreement (at least in my experience) is that if you are paid for work, your employer owns your work product. This has been true for me over my entire career. Why would you expect to be compensated beyond your contract for being an inventor if you did the inventing while being employed? – Eric S – 2019-02-05T21:57:30.433

When I was hired I didn't have to sign an employment agreement. I agreed to work as a freelancer for the European company from a 3rd world country. My salary was 20 times less the salary in europe. Nobody believed in us. Until we did it. After that they came with a bunch or legal topics and restrictions – VMMF – 2019-02-05T22:02:32.150

So the question of whether you retain any ownership rights to work done for a fee is one you might want to ask on the Law SE site. This likely depends on the country you were in at the time of the work. As I said, the general rule of thumb is that if you got paid for the work the person who paid you owns the work. However, I'm in the US and I am not a lawyer. – Eric S – 2019-02-05T22:05:19.377

I have no problem with them being the owners and I'm just the author. The problem is that the document contains additional unnecessary things forbidding me from work on similar fields or talk about anything related to the patent for 10 years – VMMF – 2019-02-05T22:09:30.767

Weird. The patent publishes so it isn’t a secret. I’d post a question on the Law SE site about the documents. I certainly wouldn’t sign something that limits my future employment without significant money as compensation. – Eric S – 2019-02-05T23:08:54.867



Especially in the U.S., correct inventorship is important. Co-inventors are not strictly analogous with co-authors. In the U.S., all true inventors must be listed. An inventor is someone who makes a conceptual contribution to something that is claims. The only legitimate reasons to remove an inventor would either be for them to decide that you were listed inventor for EPO purposes (where correct inventorship is not as critical) but never really qualified as an inventor under U.S. rules; or for the one or more claims in the EPO version you particularly contribute to be dropped from the U.S. application.

Under the new (2012) AIA U.S. patent law, if the company has a signed papers from you agreeing to sign any and all required documents, they can do without your signature by swearing they tried to get you to sign and attaching copies of what you signed previously.

George White

Posted 2019-02-05T01:49:06.637

Reputation: 21 648

Thanks for your answer. What is an inventor for EPO purposes or EPO version? – VMMF – 2019-02-05T11:14:21.823

wikipedia says ". . . In some patent law frameworks, however, such as in the European Patent Convention (EPC) and its case law, no explicit, accurate definition of who exactly is an inventor is provided. The definition may slightly vary from one European country to another. Inventorship is generally not considered to be a patentability criterion under European patent law." – George White – 2019-02-05T21:53:31.883

If the patent had another inventor and he wasn't added in Europe because of disagreements between him and the company. Does this mean that the patent without him is illegal in US? – VMMF – 2019-02-05T21:58:11.203

Until recently patents were being invalidated for incorrect inventorship. That changed with the 2012 AIA law change. Now inventorship can be corrected even after it is challenged in court and no one needs to sign something saying it was without deceptive intent. – George White – 2019-02-05T22:05:39.983

What do you mean even after challenged in court? They could remove my name from the list of inventors even in the European version? – VMMF – 2019-02-05T22:12:34.217

1No - I'm saying that if they do not list the true inventors in Europe nobody cares. If they do not list the true inventors in the U.S, it is a problem but it is not a fatal unfixable problem. – George White – 2019-02-06T19:14:02.483