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An inventor has to sign a declaration stating that they attest to the patent application, the company can’t get a patent without it.[1] So if you don’t execute

An inventor has to sign a declaration stating that they attest to the patent application, the company can’t get a patent without it.[1] So if you don’t execute the dec, they can’t get the patent granted. They do have up until that time, however, so a company could hypothetically put your name on it through prosecution without your input, but they can’t get the patent issued. But by sending them prior art, they do have to forward that on to the patent office, to fail to do so would be a clear violation of their duty to disclose.[2] You could also anonymously submit the prior art, in the case that your company chooses to violate their legal duties but you also want to not get fired. If you believe that the patent may be valid, but you for some reason insist that you in fact are not the inventor, take it up with your attorney first. If for some weird reason the attorney still insists on listing you as the inventor, you could probably take some kind of legal action either at the PTO or in a federal court to assert that you’re not an inventor. Usually this happens in the case that someone is trying to assert that they are an inventor, however, for obvious reasons. But, if the company does get a patent for something even though you may disagree on the merits, you may be obligated under your employment agreement to be cooperative in signing the dec and assignment, but that’s a matter of contract and employment law, not patent law. [1] There are provisions for hostile, missing, or deceased inventors, but if your objection to the patent is only technical or prior art based, that’s probably not the appropriate way to handle it. [2] The duty to disclose is a BFD. If your middle management is oblivious or ignorant, run it up the flagpole to an attorney. Someone with an actual license to practice law and preferably admitted to the patent bar. They will listen to you, I guarantee it.

gota 8y ago
By your nickname I get you actually work with this, so sorry to derail the conversation but what is the demand for engineers-turned-lawyers as the original post describes?
viraptor 8y ago
The application listed multiple inventors, most of them were happy with the process and signed the application. I'm the only one who didn't as far as I know. I don't care about this case enough to actively work against it. It was just something I didn't expect was even an option. Also I wasn't aware I can't request to remove my name. (my goal was to not be associated with any filed patent)
tripletao 8y ago
I believe your comment above is correct, but subtle enough that both jacques_chester and whoever downvoted him may have mistakenly concluded that it's inconsistent with his comment below. The situation that I understand is that: 1. I sign a typical employment agreement where I promise to sign patent paperwork. 2. As part of my employment, I make a thing. 3. The company (my manager, the company's lawyers, etc.) wants to apply for a patent that claims my thing. 4. I agree that I made the thing, but I tell the company that the thing isn't patentable because of prior art. Then what happens? Am I correct that (a) the company may proceed with a patent application; (b) the company is obligated to include me as an inventor, because I made the thing; (c) the company and I are obligated to disclose my alleged prior art with the application, assuming that my prior art really is in the general vicinity of my thing; and (d) I'm obligated to sign the declaration? Nothing in any employment contract I've seen creates recourse for employees who disagree with the company about what's patentable, beyond waiting for the examiner to reject the claims. It would be weird if something did--the legal standard for prior art departs considerably from common sense, so I'm not sure why the non-lawyer employee's judgment would be relevant.
- dyu 8y ago
  You would disclose what you know, along with prior art. The company's patent attorney makes a call (along with applicable liabilities) whether it's patentable, USPTO makes a call whether it's patentable, and maybe eventually the court makes a call whether it's a valid patent. You do your part (as part of the employment contract), but probably do not get to decide whether it's patentable or not.

gota 8y ago

By your nickname I get you actually work with this, so sorry to derail the conversation but what is the demand for engineers-turned-lawyers as the original post describes?

viraptor 8y ago

The application listed multiple inventors, most of them were happy with the process and signed the application. I'm the only one who didn't as far as I know. I don't care about this case enough to actively work against it. It was just something I didn't expect was even an option. Also I wasn't aware I can't request to remove my name. (my goal was to not be associated with any filed patent)

tripletao 8y ago

I believe your comment above is correct, but subtle enough that both jacques_chester and whoever downvoted him may have mistakenly concluded that it's inconsistent with his comment below. The situation that I understand is that: 1. I sign a typical employment agreement where I promise to sign patent paperwork. 2. As part of my employment, I make a thing. 3. The company (my manager, the company's lawyers, etc.) wants to apply for a patent that claims my thing. 4. I agree that I made the thing, but I tell the company that the thing isn't patentable because of prior art. Then what happens? Am I correct that (a) the company may proceed with a patent application; (b) the company is obligated to include me as an inventor, because I made the thing; (c) the company and I are obligated to disclose my alleged prior art with the application, assuming that my prior art really is in the general vicinity of my thing; and (d) I'm obligated to sign the declaration? Nothing in any employment contract I've seen creates recourse for employees who disagree with the company about what's patentable, beyond waiting for the examiner to reject the claims. It would be weird if something did--the legal standard for prior art departs considerably from common sense, so I'm not sure why the non-lawyer employee's judgment would be relevant.

dyu 8y ago
You would disclose what you know, along with prior art. The company's patent attorney makes a call (along with applicable liabilities) whether it's patentable, USPTO makes a call whether it's patentable, and maybe eventually the court makes a call whether it's a valid patent. You do your part (as part of the employment contract), but probably do not get to decide whether it's patentable or not.