Patent Inventorship & Ownership
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 Free 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 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 Co-Iventor?
Whether through admission, knowledge or through discovery via the inventorship inquiry above, it is critical to identify all co-inventors prior to filing a patent application. In fact, all co-inventors must be named on patent applications by law. 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 exclude others from making, use, sell, import 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.
Who owns the Patent Rights?
By default, the owner of the patent rights is the inventor, or, as discussed above, all of the co-inventors, 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 an employment contract upon hiring on and in there is usually an assignment of intellectual property clause. What this clause says is that so long as you are an employee, for 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 its 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 invention 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.