Expert: George H. Morgan, P.E., Patent Agent - 2/29/2008

Question
I am writing a PPA for a musical instrument.  I invented the whole thing but there is a specific curved part that requires some hard core math.  If I hire someone else to figure out the exact curve mathematics do I have to include their name on the patent?  If so then can I limit their involvement to only one claim?  Thanks.

Answer
The basic rule is that if a person contributes to a claim, he is co-inventor.

Here is how I handled a similar situation in my own case. I have a client that builds a six wheel all wheel hydrostatic drive vehicle where I developed the hydraulic circuit & various improvements. Five patents so far, all licensed, exclusively, to the manufacturer. I came up with a very significant improvement enabling going from a series parallel circuit to an all parallel circuit, resulting in a 3 to 1 speed range. I have a friend who enjoys world wide recognition as a fluid power guru. On my inventive circuits, I engage him to lay out the circuits showing the componentry I have selected in proper fluid power depiction. We swap services. I write up his applications, and he draws up the circuits I develop. However, on this latest development of mine, which has significant commercial potential (Sound familiar?  It is what we inventors all claim!), my friend made a suggestion on valve actuation that significantly improved the reliability of the circuit. I wanted that covered. There is a claim addressing that. I told him I had a deal for him!  I would name him as co-inventor, so he would get the significant recognition, in return for him assigning his interest to me. That was acceptable to him. As it developed, I figured out how to mark the drawings as his copyright material, on the application drawings, (Re. "How to Make Patent Drawings" by Lo and Pressman, published by Nolo Press); and then, when the manufacturer wanted the assignment, (vs. licensing), I had him assign it to the manufacturer who cut him in on the action. As it did not affect my compensation, it was a win/win all the way around.

In your case, as you are hiring the man, you need to get his agreement to assign his interest to you, as well as co-operate in the patent process as needed. If you are doing your own provisional, you should be consulting "Patent It Yourself" by  David Pressman, again by Nolo Press of Berkely, California. He has a form for sub-ciontractors to sign that I believe covers the matter. He gives permission for his readers to zerox his forms.

Hope that helps. Best wishes on your project.

(By the way, avoid the "patent help" advertisers on Allexperts. Some are legitimate, some are not. Allexpeerts blames it on Google. I resent the listings of at least one scam
artist on the pages that I am listed as an expert on.)

George H. Morgan
Professional Engineer
Patent Agent
web site: http://www.evansville.nt/biz/patagent  (lots of free info).