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By J.D. Houvener
Patent Attorney and Founder

Hey everyone i’m jb hoover and welcome to the bold today show i’m your host and the owner here at bold patten’s 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 tinkers people just getting started and want to know what patins is 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 uh 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 you know 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 right here 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 screaming booking the screening session with us so what i’m going to do after this uh introduction is go through our 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 in mentorship 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 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 at 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 all right 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 uh and ask questions i’ll try to get back with you we have a team that looks across our social channels and uh provides answers to those all right so today’s topic co-inventorship conversions 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 you know 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 to where they want to flesh it out right get some more details on it and get to the point of an invention as it happens many times in that process of flushing right 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 right that that’s that conception and so if someone else actually helped you with that conception right the conceptual high level solution to the problem that the invention solved they are a co-inventor okay and and technically under the uh the manual for patent examining procedures the mpep a co-inventor is one that contributes to at least one element of one claim right so claim structure as we’ve talked about in previous sessions is was 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 right usually independent and then dependent claims from that 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 that’s a part of the overall invention and their 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 a co-inventor ship 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 all right so cone vendorship is very important another thing that comes up oftentimes in the same type of discussion as an initial consultation is in uh is ownership okay patent ownership and this is uh no different than new mentorship okay ownership has to do with who owns the right okay and so uh while a patent is pending you know 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 um 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 okay 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 okay and an 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 assigned to a company or even an individual an assignment is a legal term for you know transfer of ownership you’re assigning your potential or actual rights to another party and typically you’re doing that for uh consideration consideration you know contracts law terms for modern monetary or some other form of compensation where you’re getting a benefit a benefit for giving up your rights or prospective rights for some benefit um in most you know common uh transactions it’s money okay 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 net income whatever it is that you’ve negotiated okay so you can uh 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 okay and that’s separate from inventorship so the inventor is still me right i 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 right to make sure that the inventor’s fully represented and the is as well so i don’t want to mighty the waters too much with respect to attorney client engagement but uh i want to kind of backstep a little bit okay because what can happen up front within inventors especially those that are working full-time or even working part-time for an employer in an employee employer relationship is there are special provisions in many states there are enforcement under an employment law where if you’re inventing on the job as part of your duties as part of your your normal day-to-day and day in day out work and or your bosses ask you just to develop a solution to a problem you will most likely be obliged to assign your invention to your employer okay so your employer will actually own the invention not you and this is very important to do this inquiry right up front right 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 up front 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 right you 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 call you know a conflicts waiver or you know in writing saying hey look uh i am developing this product outside of company abc i like to pursue this and own it independent and they would sign off and agree to that likely making sure that you’re not going to be working um on your side hustle during business hours while you’re an employee so that’s a very important thing to understand right up front all right well that’s that’s it for uh inventorship and ownership i want to make sure i cover those two subjects with you and and we did i do have a few patent application questions here in avo um 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 a 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 um yeah that’s good it’s good i i i think the analogy is close i would almost say um you know having the the design patent is like having all the greens right pacific pennsylvania and uh north carolina right whatever that is and having the utility patent would be having the blues all right 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 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 uh using or selling that invention and what’s better than a monopoly well having the whole strip right the whole street okay i mean you’re blocking out even more because as as you know as i’ve talked about design patterns protect what things look like and that is awesome okay what you’ve got as a on your swirl for for example if you had a utility patent as well now you can prevent others from doing something similar even if there’s 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 all right let me jump to some obvious questions and fabio 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 all right i have a template for t-shirts and mugs etc but it’s original but it is 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 you know 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 right look at our bold logo right this is a design and here’s the word right 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 uh at the ministry or current parishes there uh you wanna make sure that they can see the template the logo the the wording and recognize oh yep i know exactly what ministry that is i can tell right that association is good will right it’s the relationship it’s the feeling people have about your ministry and that’s under trademark goal 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 uh 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 come and i see a few other people hopped on you’re welcome to do just fire away with questions i’ll take those as priority okay so who would i talk to about patenting an idea to pitch to linkedin about their app so i came up with idea that i like the patent what i do next and who do i talk to all right well i mean come on here to our our forum and learn um one of the best places is by by educating yourself and i’ve made this a huge priority in my own practice at our firm i published a book my bold ideas the adventurous guide to patents that is yours a pdf downloadable copy if you take action and schedule a free screening session reading books reading our blog i mean we’ve got a lot of wonderful articles there i encourage you to take a look there certainly there’s other resources outside of our own website the patent office at is fantastic okay so i’ve just provided that link to the government’s website um it’s important for you to learn a little bit about it right obviously don’t become you’ll need to become a patent attorney or go to law school or anything you’re an inventor uh but you should be aware of the process right i don’t want you to get bamboozled by anyone you know it’s kind of like anything you want to spend your money and time and effort and you’ve got to learn just enough to be able to you know hire the right professional you know make sure you’re comfortable that’s one of the reasons why we set up a screening session this week kind of get to know you a little bit make sure there’s a good fit before we move forward together so absolutely no matter what you’re trying to you know protect whether it’s a an app idea for linkedin or a new mechanical hardware you know component for the kitchen okay whatever it is you’ve developed the first step is going to be discuss your invention with a trained professional have a have a discussion about is this eligible right does this fit within the patent laws as a machine an apparatus a method or a process does it fit into the that whole you know framework and then what are the steps after that um and 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 hey 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 your question here and um 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 uh as well to get the ball roll all right so father you had a question here you’re feeling guilty asking this free question i know this is great um this is why i’m here uh so don’t don’t be bad flavio uh why would the uspto publish your claims is your question uh let me share this with everybody um

is it to see if someone else has invented my spiral time ingenuity and to come forward 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 okay 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 okay it’s part of the normal procedure even though you haven’t gotten your patent rights granted yet right so the traditional path is a provisional is filed january 1st 2021 non-professional the formal application is due to be filed january 1st 2022 okay 12 months has 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 a you know now it’s june 1st 2022 18 months has passed from january 1st 2021 to june 1st 2022 that application will get published right and even though it’s still pending uh that is part of the publication process we want to be able to share with uh the country share with the world frankly what you’ve come up with and 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 right i mean the public is going to gain information and knowledge from you um 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 public record and so they they don’t have to themselves cite all this you know submittal information it now becomes part of the what’s known in the art and certainly they can they can cite published applications uh when they look to try to reject or object to claims have been submitted

long story short there’s no there’s really no way out of publishing and that’s part of it and 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 so thanks for your question flavio keep them coming do not feel guilty i love that you’re here every week i i’m hoping to build a vibrant community so share this with your friends on social favio and anyone else that’s watching i want to get this you know 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 um i will do one more on the patent infringement side and then we’ll wrap up okay

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 they gave up rights to those patents okay while they were an employee um after they have left okay i mean 11 years ago that’s a long time um after you no longer are an employee i don’t believe there are any obligations to you okay um now there are situations that upon leaving the company as part of it say a severance package let’s say it’s feasible that the company would say allow a license okay 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 leaving 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 okay to come in as an expert or at least frankly be able to account for your time um and uh and hustle so really is no interest for you in that in terms of financially

anyway so hope that helps you out there interesting story i’d be curious to kind of get some more details on that um and then just very briefly when 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 pet and they 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 events act in 2013 and that tribunal that a 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 have recently adjudged specifically related to software and computer implemented inventions it has 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 you before you start forcing 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 all right everybody i’m going to wrap up again my name is jd hoover i’m a patent attorney and owner here at bold patton’s law firm we have inventors get patent 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