Posted on August 18, 2023
Hi, everybody! I’m J.D. Houvener , your host of the Bold Today Show where you, the inventor, entrepreneur, or business owner, get your daily dose of inspiration to make the world a better place. [Music] Hey, we’re in part two of our series talking about pre-filing considerations. I’m excited to share with you some of the big input that I get from a lot of clients and some confusion about differentiating between inventors and owners.
So, inventors, of course, are those that actually have a creative input into the invention, right? They’ve come up with some substantive ideation and creativity that goes toward the eventual creation, the heart of the invention. Owners, on the other hand, or otherwise known as assignees, they own it. They have the legal rights to, once that patent gets granted, to exclude others from making, using, selling, or importing into the US. But it’s certainly a huge, critical, important part right up front.
Before we do any kind of patent searching or developing a patent application, we need to make sure that we’re working with an inventor that has clear goals and objectives and they know what rights they’re going to have. Sometimes we do end up having clients that are employees at big companies, and sometimes their invention, even though they’ve developed it off hours, on the weekends and nights, and even they’re using the company laptop, they’re using the company phone, and maybe they’re working on breaks or at lunch, and the project is actually pretty closely related to what they do at work, that is actually or all those points lend toward the company owning the patent. They’re actually going to be the ones that have the assignment obligation per the employment agreement that the inventor likely signed. So, it’s really important to clear up right away before the employee comes up and pays for this, that they know that there’s actually a big chance that the ownership of this invention would belong to the employer.
If the inventor wanted to sort of keep it quiet, the attorney really wouldn’t be able to help them because it’s likely going to come back later if the inventor were to try to bring that forward and trying to enforce that against a would-be infringer. The employer’s going to come back and say, ‘No, no, no, I don’t think so.’ So, what’s going to happen is we need to have that full conversation right up front to make sure that’s all clear.
Another misconception with inventorship is a lot of people think that, you know, Party A, for example, all they do is come up with the groundbreaking idea. They’ve got that inspiration, that creative inspiration of that idea, and Party B is the one that actually builds it, you know, brings it to life, figures out which parts work, what kinds of materials work, and they bring the prototype to life and get it functional. Who do you think is the real inventor? Party A or Party B? The answer surprisingly is only Party A, the one who conceived of the idea, brought it into life, that invention, not the one that brings it into reality, not the one that builds it, and actually just, you know, follows the instructions.
It’s a big and interesting concept that even if Party B did all the work, you know, they did tons of effort bringing it to life, Party A was the one who conceived it. Party A alone should be named on the patent application. So, this has been helpful for all of you out there, business owners, entrepreneurs, and inventors. If it’s been helpful and you think it might be helpful for someone you know, just forward the email to them. They’re going to get this information, going to get the daily email just like you do.
So, hope you all had a wonderful day today, and I’m your host, J.D. Houvener, of the Bold Today Show. Go big, go bold!
