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I am listed as a co-inventor in provisional patent application AA/AAA,AAA. The other co-inventors are PersonA, PersonB and PersonC.

One year later my employer company filed a non-provisional utility patent application BB/BBB,BBB. This application claims benefit of previous application AA/AAA,AAA, incorporates AA/AAA,AAA entirely and has the same title of invention. Inventors list of BB/BBB,BBB is "PersonA, PersonB, PersonC and PersonD" (my name was not included).

Is it possible to force company or co-inventors to include my name into inventors list of BB/BBB,BBB?

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  • Did you have any involvement in the patent B, even if it references patent A, or do you just want to be included because of your work on A?
    – Ron Beyer
    Commented Jan 14, 2020 at 21:31
  • The OP says it claims the benefit of the previous application, therefore there is at least an overlap in subject matter by definition.
    – George White
    Commented Jan 15, 2020 at 0:45
  • I'm sure that I'm the inventor. But does authorship of provisional application implies authorship of a subsequent non-provisional application?
    – user29372
    Commented Jan 16, 2020 at 8:25

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An inventor is someone who makes a conceptual contribution to something claimed. Provisional applications are not required to have claims so at the time of filing the concept of who is and is not an inventor may not be accurately known.

The charitable explanation is that whatever your contributions was it was deemed not a conceptual contribution to something they ended up claiming. On the other hand many organizations put people on as inventors by a pecking order related to management and profile in the organization.

If you are an inventor of at least one claim, they risk having a defect in the resulting patent due to incorrect inventorship. Until the AIA law that could be a fatal flaw if it no one could swear that it was not by "deceptive intent". Now it is easy to fix without anyone swearing to anything.

To answer your question, if you no longer work for the company you might send an email or letter to the company's outside patent attorney. If you still work for the company I would bring it up with my manager. The angle that it hurts them (not much anymore) to have erroneous inventorship might get you somewhere.

Of course, this is all for glory in that you have presumably signed your rights to this invention and others to the company already.

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  • Yes, provisonal application does not have "claims" section. Is it good or bad for me?
    – user29372
    Commented Jan 16, 2020 at 8:28
  • @ALQ What matters is what is in the non provisional claims.
    – Eric S
    Commented Jan 16, 2020 at 15:26
  • No claims in the non provisional is normal - it does mean that the invetorship listed is essentially approximate since, without claims no one can say if person X did or did not contribute conceptually to a claim.
    – George White
    Commented Jan 16, 2020 at 18:37

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