And don't forget the confusing 'one-year' rule. If the invention was offered for sale more than one year before your ex-partner's patent application was filed, then the patent should not have been issued and it doesn't matter who is listed as inventor (unless your partner is claiming priority on the basis of the provisional patent application and filed within one year of that filing date). If the patent should not have been issued and the USPTO made an error, the Dear Rich Staff believes you should talk to a patent attorney about starting a proceeding at the USPTO to invalidate the patent.
Tuesday, January 5, 2010
My Partner Stole My Idea ... or Did She?
Dear Rich: In 2003 I had a small company (controlling interest) with 2 lesser partners. At that time I had an idea and applied for a provisional patent. I included one of the partner's names as well since she worked with me on it but the idea was mine. Nevertheless, I was willing to share. When it came time to do the non-provisional patent the following year, she claimed she did not have any money to contribute for lawyer fees and since I had already severed our business relationship anyway, I dropped the patent idea and just went ahead and made the item and put it into my showroom collections to show customers. I told her it was OK with me if she also wanted to sell the item herself. I just recently discovered that she has somehow patented the item (and has added an assignee.) In PR material she touts herself as "the inventor of" and even won a design award last year. Is it legal to obtain a patent that was a collaboration, especially after a provisional patent had been filed with both names? After the item has already been shown to prospective clients? I have well-documented photos of the original prototypes I had made in China as well as photos from the company showroom that very clearly show the item. (The original computer date signatures are on the files and are a full 2 years before her patent was filed.) Do I have any legal recourse? That seems like fraud to me. What about the assignee? Whoa ... that's a lot of information. You may have a legal basis to pursue your ex-partner, but some things are unclear. For example, did you examine the patent that was issued to be sure that it was for the same invention that you sought to protect with your provisional patent application? If your ex is claiming something different, there may be no reason to list you. On the other hand, if you are an inventor -- you contributed to at least one of the claims--then your name should have been included in the patent application. If the patent is valid, it could be corrected to include you, and your ex should account to you for any income under the assignment (although patent law is a little odd about when co-inventors must account to each other).