Who’s the Inventor?
Sometimes the simplest questions get overlooked. One of the first inquiries that our Bold Patent Attorneys will work with you on in a 30 Minute Consultation, confirms that you are the one that conceived of the invention. There are a few things to consider in this step, and it is to make sure that there will not be any other person or entity that contributed to the invention or concept that should be named as a Patent Co-Inventor (see below section). It’s important to note that just because you have brought about the invention by fabricating a prototype, doesn’t mean you are the inventor. It is the inventor who first conceives of the idea, and is able to relate or explain the invention in words and drawings to someone in the field of art. Get with a Bold Patents Attorney today if you’re unsure as to who the inventor is.
Are You a Patent Co-Inventor?
Whether through admission, knowledge, or discovery via the patent inventorship inquiry above, it is critical to identify all co-inventors prior to filing a patent application. In fact, all patent co-inventors must be named on patent applications by law. Patent co-inventors get equal rights as any of the inventors to have exclusivity to the ENTIRE invention to prevent any (non-inventor) in the applicable jurisdiction from making, using, selling, or importing the invention. That also means that no co-inventor can prohibit another co-inventor from exercising their rights to exclude others from making, using, selling, or importing the invention. These rules are true so long as the inventor has not assigned their invention to another individual or entity (see patent assignments). So, if you’ve co-developed or think you are unsure about who the inventors are in your project, please give us a call and we can provide a Patent Inventorship Opinion.
Patent Ownership
Who owns the Patent Rights?
By default, patent ownership is held by the inventor, or, as discussed above, multiple owners, equally. However, as is the case for a majority of inventions, they are developed while being employed by a company. Usually, companies require employees to sign employment contracts upon hiring and there is usually an assignment of intellectual property clause. What this clause says is that so long as you are an employee, any intellectual property that you develop while on the job or within the scope of your job assignment, belongs to the company. Thus, there is an automatic obligation for an employee-inventor to assign the invention rights over to the company. So, it becomes critical to understand whether you as the inventor are inventing on behalf of the company (if it’s related to your job, if you’ve worked on the invention on-hours, using the company’s resources) or if it is more like your own personal invention (not related to your job description, has been worked off hours, not using employer’s equipment/resources). This inquiry can be quite detailed and an opinion on patent ownership can be an important thing to discuss with your local State-barred Patent Attorney. I mention state-barred, because this opinion will necessarily include an analysis of state employment law (which is state-specific) as well as patent law. If you’re still unclear about who owns the invention you are working on creating? Get with a Bold Patents Attorney today to clarify ownership.
Choose an Experienced Patent Firm: Bold Patents
Leveraging the knowledge and skills of an experienced professional to help with determinations about ownership and inventorship can save you time and money. Doing so can also decrease the frustration and potential legal disputes that could arise if you were to file a patent application only to learn that patent inventorship isn’t as clear or straightforward as you initially think it is.
Bold Patents works with inventors to help clarify ownership in a variety of situations, including inventors whose ideas were created in the workplace and inventors who may not be able to claim sole inventorship because others were involved in conceiving of the idea or devising experiments or building prototypes. Similarly, we work with employers regarding patent inventions created for their companies, helping clarify inventorship and, ultimately, ownership of the patents for their products.
As a full-service patent firm with deep experience in all types of patent and other intellectual property matters, we work with clients across the country. Our industry-experienced, scientifically trained attorneys and staff offer a fully remote service model and transparent pricing, providing unmatched convenience. Schedule a Discovery Call today to learn more.