Patent Attorney and Founder
Hello, everyone! I’m J.D. Houvener, your host of the Bold Today Show, where we help inventors and entrepreneurs just like you get your daily inspiration so you can go make the world a better place.
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We’re here, this is our third session, we’re talking about what are the steps to get a patent for an invention, how do you get a patent for your invention. Step number three: looking at inventorship and ownership. Well, it may seem like an odd inquiry – who is the inventor is where we start, and certainly the client that sits before us is usually the inventor. But this question gets at a little bit more detail. When you are starting to produce this or prototype or develop the invention, did anyone or a group of people have a hand in the invention? Did they help conceive of any aspect or functionality of the invention? If so, they should be listed as an inventor, as a co-inventor on your patent application. It’s important to get this answered right up front so there’s no controversy later, as we have gone through this with a few clients that’s quite litigious and it can cause a lot of anxiety once the patent rights are granted. And if there was an error made upfront, there’s a big risk to the patent being invalidated due to perhaps fraud on the Patent Office.
The second inquiry is looking at ownership. We’ve got to answer this right up front. Many inventors are employers, many inventors are employees. The latter, the employees, are the most subject to this issue. When you have a job, you sign an employment contract, and so when you do that, you’re giving up certain rights. Usually, most employers will ask their employees to give up or assign all intellectual property, including patents, to the company that they’re working for. Now, this is proper and legal in most any state. The issues come up when inventions are created off hours or outside the scope of the employee’s job description. So the inquiry kind of goes in deeper, it becomes a matter of state law, state employment law. We advise on the statute for patents, and we know that we can advise our clients that if they are using the employer’s computer on employer’s time and being paid for work, even if it’s unrelated to the job description, the employer’s probably got a very good chance of having an ownership of the patent rights. So the last thing we want to do is have you hire us and end up having the patent owned by your company, owned by the employer that you work for. So these questions of co-inventorship and ownership are super critical, and it’s right up front here in step three. So if you have any questions about whether you might be a co-inventor or if you’re not sure, please just give us a call.