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By J.D. Houvener
Patent Attorney and Founder

Hey everyone, I’m J.D. Houvener, and welcome to the Bold Today show. I’m your host and the owner here at Bold Patents Law Firm, where we help inventors get patents. I’m here every Wednesday at 9 a.m. Pacific and noon on the East Coast. So, for all of you inventors, entrepreneurs, business owners, tinkerers, people just getting started, and want to know what patents are all about, you’ve come to the right place.

I’m going to be unloading lots of information week over week. This week, our topic is about co-inventorship and ownership, so we’ll get into that in just a little bit. Let me lay out a few things for you just in case this is your first time coming or watching this after the fact. If you’re watching live, of course, please don’t share any confidential information. This is not the place or the forum to share an invention. And if it’s after the fact and you’re watching this on our Facebook or YouTube or Twitch channel, again, don’t post any confidential invention subject matter. The right place to do that is going to be to have a free screening session with one of our representatives from our firm. And you can schedule a free screening session by following this link I just posted right here. Okay, that link is going to give you a copy, a free PDF download version of ‘Bold Ideas: The Inventor’s Guide to Patents.’ And that book will give you the basics, the nuts and bolts on what’s the difference between a provisional non-provisional, how to walk through the differences between a trademark and a patent, all that good stuff. So, you’d be welcome to that for taking a bold move and booking the screening session with us.

So what I’m going to do after this introduction is go through our topic of the day, which is, again, inventorship and co-inventorship, where you have more than one inventor and the challenges that can come up with respect to ownership of a patent, which are separate, okay, sort of administrative rules around inventorship and ownership. After that, I’ll be going over our invention topic and then any live questions and answers we have here in the forum. And then after that, we’ll go to our avo.com. So if any of our listeners are from avo and there are questions that you have asked, I will be answering those. I got that last on the agenda, okay, so you can feel free to fast forward if you want. I encourage you to hang in there with us and watch the program today.

Alright, so no live listeners right now, but I know that they are likely on their way. And if you’re watching this again after the fact, feel free to watch and ask questions. I’ll try to get back with you. We have a team that looks across our social channels and provides answers to those.

Today’s topic: co-inventorship, covers when you have more than one inventor and when do you know you have a co-inventor. It’s pretty classic to have an inventor that has the main first spark of creativity, and they want to move forward with bringing something to light. If they have a solution they’ve thought of, perhaps it’s been over months or even years, and they finally get to the point where they want to flesh it out, get some more details on it, and get to the point of an invention. As it happens many times in that process of fleshing, creating what pieces might come in there, what part of that solution set will create the answer to the problem the invention solves. If you need somebody else, you need someone else to help you get to that point. You can’t quite figure out that spark, that conception. So, if someone else actually helped you with that conception, the conceptual high-level solution to the problem that the invention solved, they are a co-inventor. And technically, under the Manual for Patent Examining Procedures (MPEP), a co-inventor is one that contributes to at least one element of one claim. Claim structure, as we’ve talked about in previous sessions, is eventually written down and argued before the patent office that this is what I own, this is what I’ve invented in English words, and there’s a numbered set of claims, usually independent and then dependent claims from that set. So, a co-inventor is someone who’s actually contributed enough, contributed to that conception to where they’ve actually helped to formulate, and they truly have invented a part of, even if it’s a part of the overall invention, and what they have invented shows up in the claim language. So, that was kind of complicated. If you’re confused in terms of whether you may be a co-inventor or whether you may owe co-inventorship to someone else, please book a screening session today. You’ll be able to kind of make sure it’s a good fit working with our firm. We’ll kind of size things up and look at your situation accordingly.

Alright, so co-inventorship is very important. Another thing that comes up oftentimes in the same type of discussion as an initial consultation is ownership. Okay, patent ownership. And this is no different than inventorship. Okay, ownership has to do with who owns the right. Okay, and so, while a patent is pending, if a patent is just filed, there are no rights. Okay, there are no actual right, the ability for you to take someone to federal court, for example. But you do have the ability to be first to file. So, you’ve got that priority date locked in. And so, anyone that files an invention after your filing date will lose to you in a priority battle. That’s the big benefit. Now, rights don’t actually become valid until you get that patent granted. So, once the patent is granted and issued from the patent office, that’s when you have the ability to take someone to court. Well, ownership kind of passes through all those channels. And ownership of an invention can happen as soon as you file for an application. As soon as that pending application is before the patent office and it’s given a serial registration number, that can be assigned to a company or even an individual. An assignment is a legal term for a transfer of ownership. You’re assigning your potential or actual rights to another party. And typically, you’re doing that for consideration. Consideration, contracts law terms for monetary or some other form of compensation where you’re getting a benefit for giving up your rights or prospective rights for some benefit. In most common transactions, it’s money. So, you give an outright sum of money or payments over time, or even potentially through a license agreement where you’re making a royalty based on either gross receipts or net income, whatever it is that you’ve negotiated. So, you can assign, as the initial inventor, I’m going to assign individual rights to a company. Right, ABC Corp. And so now, ABC Corporation owns that application. And that’s separate from inventorship. So, the inventor is still me, even though I’ve assigned the rights to the company. So, the patent attorney will have duties to both the inventor and to the company to make sure that the inventor is fully represented and the company is as well. So, I don’t want to muddy the waters too much with respect to attorney-client engagement, but I want to backstep a little bit because what can happen upfront with inventors, especially those that are working full-time or even part-time for an employer in an employee-employer relationship, is there are special provisions in many states. There are enforcements under employment law where if you’re inventing on the job as part of your duties, as part of your normal day-to-day work, and/or your boss has asked you just to develop a solution to a problem, you will most likely be obliged to assign your invention to your employer. So, your employer will actually own the invention, not you. And this is very important to do this inquiry right upfront. We don’t want to have you working with us directly. Yes, it turns out that your company is going to be the one that ends up owning the patent rights. You don’t want to necessarily pay out of your own pocket for the benefit of your company unless that’s something you have negotiated in advance with your company.

Ownership, so long story short, right upfront, that initial consultation. If you are an employee and you’ve taken a look at your employment contract, it’s an issue that may be raised if your invention subject matter, if what you’ve invented relates very closely to what you do as an employee, watch out. You’ve got to be careful and make sure that all that work is done on your own time, using your own computer, your own resources. And in many cases, you need to get a waiver, something written down and called a conflicts waiver or in writing, saying, hey, look, I am developing this product outside of company ABC. I’d like to pursue this and own it independently. And they would sign off and agree to that, likely making sure that you’re not going to be working on your side hustle during business hours while you’re an employee. So, that’s a very important thing to understand right upfront.

Alright, well, that’s it for inventorship and ownership. I want to make sure I cover those two subjects with you, and we did. I do have a few patent application questions here in avo.com. Before I do that, I want to just offer for any of you, those that are watching this after the fact, I am available for a direct email or text inquiries if that’s the way you’d like to operate. So, I’m going to provide that information here right there. And Flavio, good to see you. You’re on the journey, my friend. Yes, you are. So, simplifying the questions for our customers. The design patent would be like having Park Place, and having the utility patent would be like having Boardwalk. Nice, let me share that with everybody. I think it’s a cool way to say it. Yeah, that’s good. I think the analogy is close. I would almost say having the design patent is like having all the greens, right? Pacific, Pennsylvania, and North Carolina. And having the utility patent would be having the blues, all rights. So, meaning having both, because then a patent does provide you a monopoly. Okay, and so I want to make sure that that analogy sets in that once you have a patent granted, either design or utility, you’ve got a monopoly, my friend. You’ve got the ability to prevent anyone else from making, using, or selling that invention. And what’s better than a monopoly? Well, having the whole strip, right? The whole street. I mean, you’re blocking out even more because, as I’ve talked about, design patents protect what things look like, and that is awesome. What you’ve got on your swirl, for example, if you had a utility patent as well, now you can prevent others from doing something similar even if the shape is different. Okay, if it’s function matches your claim elements, now you’ve also got protection there. So, awesome question. Thanks for bringing that.

Alright, let me jump to some avo.com questions. And Flavio, you’re welcome to answer any or ask any follow-up questions there too. It’s always good to see you. Thanks for helping on this. First question here is out of Atlanta, Georgia. Let’s see here. Okay, and this one might be a little different category, but I’ll put that in the comments, and I’ll share that with everyone here again. I don’t necessarily pre-screen these.

Alright, I have a template for t-shirts and mugs, etc., but it’s original. Do I need to get a patent? And how much and how much produced the template for the ministry? Okay, well, how cool. Well, someone’s producing a template. I’m imagining sort of a logo perhaps, but maybe it’s something that maybe it’s having to do with the actual clothing article. But when you say mugs, it makes me believe that you’re kind of putting on a specific template or logo or pattern onto various products, and it’s related to the business of the ministry. Okay, what I would say here is this is under trademark law, not patent law. So, trademark law is all about representing words or designs. Look at our bold logo, right? This is a design, and here’s the word patents. That’s two-part. It’s actually both. We have both a word mark, as you see it right above me, you know, this is the word mark Bold IP, and there’s the logo mark for Bold. It’s probably hard to see, a little fuzzy, but you gotta have both. Okay, the trick marks protect customers, believe it or not, from confusion. So your customers, in this case, would be prospective parishioners at the ministry or current parishioners. You wanna make sure that they can see the template, the logo, the wording, and recognize, oh, yep, I know exactly what ministry that is. I can tell. That association is goodwill, right? It’s the relationship. It’s the feeling people have about your ministry. And that’s under trademark law. And so, you want to pursue a patent firm or trademark firm. Our firm would be happy to work with you to conduct a search, okay, a registrability search to see, hey, someone, anyone else using this type of a word mark or design, in this case, you’re calling it a template, have they used it before in this specific area of classification for ministering. And if they have, you might be in trouble. You might need to change your mark. But if it is not already registered, we can then help you apply for and get registration for that. All right, hope I hope to answer your question there out of Atlanta, Georgia. So, the next question here is out of Holiday, Utah.

Okay, I’ll put this question in as well and keep those live questions coming. I see a few other people hopped on; you’re welcome to fire away with questions. I’ll take those as a priority.

So, who would I talk to about patenting an idea to pitch to LinkedIn about their app? I came up with an idea that I’d like to patent. What do I do next and who do I talk to?

Well, I mean, come on here to our forum and learn. One of the best places is by educating yourself, and I’ve made this a huge priority in my own practice at our firm. I published a book, ‘Bold Ideas: The Adventurous Guide to Patents,’ that is yours as a PDF downloadable copy if you take action and schedule a free screening session. Reading books, reading our blog – we’ve got a lot of wonderful articles there, I encourage you to take a look. Certainly, there are other resources outside of our own website. The patent office at uspto.gov is fantastic. I’ve just provided that link to the government’s website.

It’s important for you to learn a little bit about it, right? Obviously, you don’t need to become a patent attorney or go to law school or anything. You’re an inventor, but you should be aware of the process. I don’t want you to get bamboozled by anyone. You want to spend your money and time and effort, and you’ve got to learn just enough to be able to hire the right professional. That’s one of the reasons why we set up a screening session – to get to know you a little bit, make sure there’s a good fit before we move forward together.

Absolutely, no matter what you’re trying to protect, whether it’s an app idea for LinkedIn or a new mechanical hardware component for the kitchen – whatever it is you’ve developed, the first step is going to be discussing your invention with a trained professional. Have a discussion about, is this eligible? Does this fit within the patent laws as a machine, an apparatus, a method, or a process? Does it fit into that whole framework? And then, what are the steps after that? What would go into a patentability search opinion, and that type of a search which would look at worldwide prior art to make sure that what you’ve invented is truly unique? Then you’d look to file an application, and only after filing would you then perhaps want to approach someone like LinkedIn in a very strategic way. So, there’s a lot of steps to come before approaching or pitching a company like LinkedIn.

I really appreciate your question here, and I wish you the very best of luck. Again, I encourage you to reach out to me personally via email or text if you have any questions and certainly visit our screening session to get the ball rolling.

Alright, so, Father, you had a question here. You’re feeling guilty asking this free question. I know, this is great. This is why I’m here, so don’t be bad, Flavio.

Why would the USPTO publish your claims? Is your question. Oh, okay, well, it’s part of the process to publish a non-provisional patent application. There are ways to request not to publish, but when you do that, you forfeit the right to international protection. So, if you’re looking to try to go big and try to get rights in other countries, you want to publish; it’s required. It’s part of the normal procedure, even though you haven’t gotten your patent rights granted yet.

The traditional path is a provisional is filed January 1st, 2021; non-provisional, the formal application is due to be filed January 1st, 2022. Twelve months have gone by while the non-provisional is pending. Typically, it takes a year or so to get a final determination or longer. Six months after that first non-provisional submittal, which is now June 1st, 2022, 18 months have passed from January 1st, 2021, to June 1st, 2022. That application will get published. Even though it’s still pending, that is part of the publication process. We want to be able to share with the country, share with the world, frankly, what you’ve come up with. It’s part of the risk of going into the patent office system in that even if your patent never actually makes it to the finish line, if you never actually get the rights granted, it gets published. I mean, the public is going to gain information and knowledge from you.

And also, it sort of allows the examiner off the hook. They don’t have to keep confidential all these pending applications; it becomes part of the public record. So, they don’t have to themselves cite all this submittal information; it now becomes part of what’s known in the art. And certainly, they can cite published applications when they look to try to reject or object to claims that have been submitted.

Long story short, there’s no way out of publishing, and that’s part of it. So, it is just even more motivation for you to try to get all the way to the finish line and get your patent granted. Thanks for your question, Flavio. Keep them coming. Do not feel guilty. I love that you’re here every week. I’m hoping to build a vibrant community, so share this with your friends on social, Flavio, and anyone else that’s watching. I want to get this bubbling. I want to get 5-10 people asking questions. That’s the best. I mean, there’s nothing better than real live questions from inventors. So, thanks again for that.

We did touch on both of our patent questions on the application site today, so I will do one more on the patent infringement side, and then we’ll wrap up.

Let’s take a look at this.

Oh, this is actually right on point. This is right on point because we just talked about patents’ ownership. This is quite a long one. Okay, so I put this in the comments. It’s probably gonna break it up into two here. Now, let’s read it off.

Am I required to support my former employer to defend multiple patents? I left the company 11 years ago. I did assign the patents to my employer. However, their attorney called last week and told me that the patents had been challenged by another company. As I know, these patents were initial patents, and subsequent patents refer to these ones. If the challenger can get those patents invalidated, I assume it can have a domino effect on their portfolio. Am I obligated to help them?

Such a good question. So remember, we just talked about this earlier today. So while they were an employee, they assigned – I did assign the patent – they gave up rights to those patents while they were an employee. After they have left, okay – I mean, 11 years ago, that’s a long time – after you are no longer an employee, I don’t believe there are any obligations to you. Now, there are situations that upon leaving the company as part of a severance package – let’s say it’s feasible that the company would say allow a license, a license back to the inventor to make use or sell the invention.

So, if that happened, okay, if there was a license back as part of a severance package upon the ending of the employment, now they have a vested right, a vested interest in keeping those patent rights valid. So, you bet I think they’d be smart for you to help your employer out to defend those patents. But if you have no ownership stake in those patents, you better ask for some money to come in as an expert or at least, frankly, be able to account for your time and hustle. Really, there is no interest for you in that in terms of financially.

Anyway, hope that helps you out there. Interesting story. I’d be curious to kind of get some more details on that. And then just very briefly, when patents do get granted and they try to enforce them on others, right – they try to say, hey look, you’re infringing my patent – this exact scenario comes up quite a bit where the company defending themselves, right, the infringers, they say well before I even say and argue I’m not infringing, I’m going to try to invalidate your patent. And they will take it out of federal court and move it to the Patent Trial Appeal Board, which is a separate tribunal as part of the Patent and Trademark Office that was launched in the American Invents Act in 2013. And that tribunal, that panel of three judges will then review to see does this patent right, is it still valid given the way the Supreme Courts and Federal Circuit Courts have recently adjudged, specifically related to software and computer-implemented inventions. There have been a lot of patents that have been struck down, that have been invalidated even though they were at one point granted. Doesn’t always mean that they’re still enforced and valid today.

So, a good point to bring up, an important one, that you got a patent granted, awesome. But before you start enforcing those rights and threatening litigation, you want to get with a patent attorney. Our firm would be happy to work with you to give you an opinion on yes, it’s still valid and yes, the other party is indeed infringing before you move forward.

Alright, everybody, I’m going to wrap up again. My name is J.D. Houvener. I’m a patent attorney and owner here at Bold Patents Law Firm. We help inventors get patents, and we can help you too. So, have a great day, good week. Go big, go bold.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/