Filing a patent without 100% ownership

Question

Along with a co-inventor, who is employed by company ABC Pty Ltd, you invent "Gadget Thing". (To be clear: you are not employed by ABC Pty Ltd.) It looks like a great, first-of-field invention with huge commercial potential.

ABC Pty Ltd files a provisional patent application with you and your co-inventor correctly identified as Inventors, but you are not privy to the filing and so remain unaware until well after the application is made public that ABC Pty Ltd deliberately recorded itself as the sole applicant (obviously a pretty stupid decision because they clearly did not own 100% of interest in the IP). This later causes problems because ABC Pty Ltd lacked standing when they filed, and the patent/application is invalidated.

Understanding that the answer will likely vary from region to region and any observations are stuck with that caveat, is it likely that ABC Ptd Ltd has done anything illegal (e.g. IP theft)? What other issues might be relevant in a case like this?

Answer 1

A U.S. answer.

In the US there is nothing about this that automatically makes the patent invalid. They listed all the inventors as required.

How did they handle not having a signed declaration from you? If they forged your signature that can be fraud on the office. Alternatively they could have said you had some agreement with them that justified them saying they tried to reach you but couldn’t (sometimes ok under the AIA law but not earlier) and therefore filed without your signature.

However, depending on the details, you might want to help them fix that up in retrospect and enjoy being exactly equal co-owners with ABC Ptd Ltd.

In the U.S. all rights flow from the inventors and the default is they can each make, sell, import, etc, and can each license with no consulting or accounting to each other, a horrible arrangement. This puts them in a bad position commercially and they might give you much money or royalty stream for you to agree to a different arrangement.

In the rest of the world the applicant is often more important than the inventors so this is a U.S. only answer.