Business Mistakes: Can a Noncooperative Inventor Stop me From Patenting my Invention?

In this video Jubin Dana of Dana Legal Services and the Patent Guru talk about what do you do when you have multiple inventors of an idea that are going to go on a patent application, yet one inventor is not willing to cooperate. This is especially important for people that have companies that get assignments from inventors and one inventor may decide not to cooperate.

You should always try to get the information upfront and early. As soon as you're preparing your application, try to get the assignment information prepared. The minute you file your patent application, get the assignment on file. Let's say for example, though, you're trying to get it early and one of the three inventors is noncooperative, they decide they are not going to sign an assignment and they are not going to assign it over. What can you do in that instance? Well, the first thing you look at is if they're employed by a company or under contract, what did the employment agreement of the contract say with respect to their obligation to assign inventions, if that's addressed in the employment agreement, or in the contract that hires the contractor, then fantastic, you use that as a basis to move forward and get the assignment you need. Now the inventor may refuse to sign the assignment. However, you can provide the contract as documentation and their obligation and prepare and file an assignment and have the other inventors sign the statement saying that this inventor is not cooperating, provide the evidence that they must cooperate, and use that as a basis to complete and file the assignment.

On the other hand, let's say you don't have any kind of agreement with this person, you employed them, they didn't sign an employment agreement, what can you do at that point, that is when it gets a lot messier. In the first instance, work early and hard to make sure that you get the assignment done quickly and early. That will also partly prompt you to understand that we don't have anything from this person that obligates them to assign things to us. In this case, the two most important things to remember are do you have anything that acts as evidence of their obligation to assign things over to the company or to the other inventors? If not, then you need to go to the inventor, and file some documentation to force the assignment. One of those things may be that you have paid them for the work they've done in exchange for them to assign the assignments over. In the best scenarios, you have avoided this situation, because upfront, you have gotten an agreement from one of these inventors that they are going to cooperate either that was in an employment agreement, or that was in their contract agreement. If you hired them as a contractor and you were sure not to send them payment for the work they've done until they agreed to their obligation and assign the rights over. In general, if you have an uncooperative inventor in terms of their willingness to assign an assignment, to give the rights of the invention to accompany or to other individuals, you have to be very diligent in how you go about doing it. You must establish a fact pattern to show that you tried to get it done, they did not cooperate, and you have evidence that shows they were obligated to assign it over to you.

Disclaimer: Nothing on this channel should be taken as legal advice. The information is not intended to create, and receipt or viewing does not constitute, an attorney-client relationship.

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