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Dealing With Inventors Who Refuse to Cooperate or Disappear

June 12, 2012

When employees have a falling out with their employers, concerns can arise if the employee is named as an inventor in a pending or soon-to-be-filed patent application and they are either unwilling to sign documents or unavailable. In some cases, former employees may attempt to use their refusal to sign as leverage in a dispute with the company, or as the basis for additional compensation. A similar issue may arise if an employee becomes seriously ill. Fortunately, there are mechanisms available within the patent system to deal with these situations.

In the United States, each inventor named in a patent application must sign a declaration when the patent application is filed (or soon after). Under the current law, however, it is possible for the owner (or other joint inventors) of a U.S. patent application to continue without an inventor’s signature. To proceed, a petition needs to be filed that sets out proof that the non-signing joint inventor (1) refuses to sign, or (2) cannot be found or reached after diligent effort.

Satisfactory proof that an inventor refuses to sign generally requires some sort of documentary evidence that the inventor received a full copy of the application papers and refused to sign the declaration. For example, if corresponding by email, a reply from the inventor saying “I received your email but I won’t sign anything until you pay me”, or something to that effect, can be sufficient. A supporting affidavit may also be submitted, for example, by a supervisor who makes contact with the former employee and asks them to sign the declaration.

On the other hand, the test for the second scenario tends to be judged according to lower standard. It must be shown that reasonable attempts were made to locate the person and ask the person to sign. For example, an excerpt from an online telephone directory showing the person’s current address, along with courier tracking information for a package containing the application papers and a statement that no reply from the inventor was received, can be acceptable. If an inventor is unable to sign for medical reasons, an affidavit from their doctor advising that they are not available to sign can also be used.

The petitions are examined by the Office of Petitions, which is a specialized section of the United States Patent and Trademark Office (USPTO), and must be accompanied by a small fee, the last known residential address of the non-signing inventor, and the declaration signed by the other inventors (if any). With some investigation work and appropriate documentation, most petitions are accepted, and no further contact with the non-signing inventor is necessary.

The recently enacted Leahy-Smith America Invents Act (AIA) is making sweeping changes to U.S. patent law. Among the changes, the AIA includes provisions aimed at simplifying the current declaration practice, which will be effective September 16, 2012, and will apply to any patent application filed on or after that date.

It should be borne in mind that the declaration is a procedural requirement in the U.S. and is distinct from the question of patent ownership. Companies should operate to ensure that they can prove ownership of their employees’ developments. It is recommended that employment agreements make it clear that ownership of all intellectual property developed in the course of employment vests with the company, and the employee is obligated to cooperate in the prosecution of patent applications, with this obligation surviving the employment relationship. Furthermore, as a matter of policy, employees should be directed to execute assignments as soon as practically possible, preferably on the filing date of a patent application, or even earlier when an invention submission form is initially presented.

Matthew J. Graff, B.A.Sc. (Matl. Eng.), LL.B., is an associate lawyer in Bereskin & Parr LLP's Mechanical & Industrial Processes practice group. He can be reached in Mississauga at 905.817.6107 or mgraff@bereskinparr.com.

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Author(s):

Matthew Graff Matthew Graff
B.A.Sc. (Matl. Eng.), LL.B.
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905.817.6107  email Matthew Graff