Ask Patents Asked on October 3, 2021
I am current graduate (international) student in a chemistry lab in USA which filed a provisional patent. I just discovered a few days ago that I am not the inventor on the patent although I solely made the product (compound) that we filed patent for. I am the first author on the publication and everyone acknowledges that I did that work. When I asked my professor about it he said we filed that patent long long ago and had no satisfactory answer that why I am not on the inventor list. How could he file a patent without making the product that he is claiming in the patent. I have all the data and experiment properly written in my log book. He included the names of two other students which have minor contribution on that work.
I am finishing up my 3rd year but I have 2 more years to work with him. What options I have to get the corrections on the inventors names?
Thanks!
I can't determine whether or not you should be listed as an inventor based on your description of your activities. The criteria for inventorship is not at all based on how much effort and time you put into the project. The criteria is based on whether you were responsible for the inventive element that is captured in a claim.
To give an example, let's assume a professor has an inspiration for a novel compound. He determines the synthesis steps and then asks one of his students to perform the experiment. The student spends weeks successfully synthesizing the new compound and weeks more characterizing the performance of the compound. In this scenario, the student would not be an inventor as he/she did not contribute an inventive step. However, let's say the student had to overcome a problem with the synthesis with a clever solution. If the clever synthesis fix ends up in a claim, the student should be named as an inventor.
The point I'm making, is the fact that you worked long and hard on the project isn't relevant to the determination of inventorship. Neither is being first author on a paper. If claims were drafted as part of the provisional application, I'd ask to review the application. If there is some inventive element for which you are responsible then you should be listed as an inventor.
As for you other question:
How could he file a patent without making the product that he is claiming in the patent.
Perhaps surprisingly, there is no requirement to actually make a product or even prove that the invention works to pursue a patent.
Answered by Eric S on October 3, 2021
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