Co-author of patent

[work_for_hire]

What is the name of your state (only U.S. law)? Commonwealth of Pennsylvania

Hello,

I performed work for a company as an outside consultant on an agreement like this one:

[url=http://contracts.onecle.com/ibuy/antebi-mark.consult.2004.12.14.shtml]Sample Contracts - Consulting Agreement - IBuyDigital Inc. and Mark Antebi - Business Agreements[/url]

modified at paragrah 13. the following:

"13. Governing Law. This Agreement shall be governed by and interpreted in accordance with laws of the Commonwealth of Pennsylvania without giving effect to any conflict of laws provisions."

The company then filed a patent on the work, mentioning that the inventors are two employees on the company (who had small to none impact on the invention).

MY QUESTION: Given the above consulting agreement, can't I as an outside consultant still be named as a co-inventor on the patent although the patent is assigned to the company?

[abahattab]

the company should have put your name as one of the inventors, but you'll not be given and mony if they weregive you a salary while you were working on the project, unless if you state this clear to them.
good luck
abdo

Originally Posted by work_for_hire

What is the name of your state (only U.S. law)? Commonwealth of Pennsylvania

Hello,

I performed work for a company as an outside consultant on an agreement like this one:

[url=http://contracts.onecle.com/ibuy/antebi-mark.consult.2004.12.14.shtml]Sample Contracts - Consulting Agreement - IBuyDigital Inc. and Mark Antebi - Business Agreements[/url]

modified at paragrah 13. the following:

"13. Governing Law. This Agreement shall be governed by and interpreted in accordance with laws of the Commonwealth of Pennsylvania without giving effect to any conflict of laws provisions."

The company then filed a patent on the work, mentioning that the inventors are two employees on the company (who had small to none impact on the invention).

MY QUESTION: Given the above consulting agreement, can't I as an outside consultant still be named as a co-inventor on the patent although the patent is assigned to the company?

[divgradcurl]

Inventorship and ownership are two separate concepts. A company cannot invent anything -- only a person, or groups of persons, can be inventors -- but a company can own a patent. And this is the usual case when employees of a company invent something -- the invention is filed by the company as the assignee of the patent, but the named inventors are the actual employees who invented the invention. So, the employees are the inventors, but all of the rights to the invention go to the assignee, the company.

As to whether or not inventorship is correct in this case, that would be dependent on the actual facts of your particular situation. If you feel that (a) you should be an inventor, and (b) that you are not obligated under your contract to assign your rights in the invention to the company, then you should consult with a local attorney who can review all of the facts of your situation and advise you accordingly.