When someone has a great idea, it's
natural for them to want to claim ownership over it by filing a patent application. For a single individual who comes up with an invention and reduces it to practice, the concept of inventorship is
However, several people frequently work on an invention. Perhaps one, two or even more people will make a significant intellectual contribution, which may make them joint inventors on the patent application.
Other people also may have a hand in the process, but they are not necessarily inventors. For instance, a worker may be asked to build a prototype of the invention. While this worker has participated in the process, they did not make a contribution to the development of the concept.
When several inventors are involved, how do companies and individuals working together decide who is entitled to identification as an inventor on a patent application?
Just because someone builds a
prototype of an invention or conducts tests of the prototype does not make them an inventor. If, in the process of their work, they introduce significant changes that improve the functionality of the
invention, then they may need to be listed as an inventor on any patent application.
U.S. patent law uses the idea of "conception" to identify inventors. The test for determining conception is whether or not the idea was permanent and concrete enough in order for the idea to be communicated to another person who is skilled in the art so they can understand the invention.
A general goal or a plan for researching a solution to a problem is not sufficient to rise to the level of inventorship. Instead, an inventor must have a settled idea with specific details to demonstrate a solution to a particular problem. Any individual who contributes to the conception, whether their contribution is large or small, is entitled to be a named inventor on a patent application.
It's never appropriate name someone who was not an inventor in an application for patent. Doing so may be cause to invalidate the patent later. Accordingly, the company's CEO or a major shareholder should never be named as an inventor unless they actually made a concrete and specific contribution to the new device.
U.S. patent law further states that
an inventor must be a person. Accordingly, it is not possible for a company or other entity to be an inventor. Many companies nonetheless own patents, but there is a significant difference between
being an inventor and owning a patent.
In situations where the inventor or inventors also are the owners of the patent, all of the inventors own an equal share of the property regardless of the size of their contribution to its creation. Any of the inventor-owners may be able to make, use import, sell and otherwise capitalize on the invention.
Frequently, an invention is made by employees of a business entity. In these cases, the people who created the concept are still the inventors, but the business may wish to own the patent rights. This means that the inventors will have to assign their rights in the invention to their employer.
Assigning patent rights typically is accomplished by means of a straightforward assignment document. These documents may be part of the worker's employment agreement. Alternatively, a fresh assignment document may be drafted for each individual invention, typically at the time that a patent application is filed.
The assignment may be recorded with the U.S. Patent and Trademark Office so that the patent owner is identified to the public. Moreover, the names of the inventors and the owner will be printed on the cover page of any patent that issues from the application.
An intellectual property attorney can help individuals determine whether or not they are inventors and ensure the proper assignment of rights to a business entity.
Author: Jeff Williams
Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.
Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.
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( By Appointment Only)