15 Tips: Patent Law: What if the Person who Invented the Design is not the Owner of the Design?
Intellectual property laws can be quite challenging for most people as they can get quite complicated as is revealed over at runrex.com. This is why when it comes to patent law, many people have questions they need answers to, to clarify one or two things. One of the areas that leaves people confused is as regards the inventorship and ownership of a design or idea. This article, through the following 15 tips, will help tackle this topic and help provide an answer to the question of what happens when the person who invented the design is not the owner of the design.
- The main concept of patent ownership and inventorship
When it comes to patent ownership and inventorship, it is important to note that while the owner of a patent enjoys all of the benefits and rights granted by the patent, as covered in detail over at guttulus.com, the inventor is not always the owner of the patent and, therefore, doesn’t always enjoy those rights and benefits.
- What is patent inventorship?
When filing for a patent, as explained over at runrex.com, you need to make sure you include a list of the inventor(s) as far as the invention is concerned. The person(s) to be listed as an inventor on a patent application is determined according to the legal standard for inventorship, and this article will look to focus on how inventorship is defined under US law.
- Who is an inventor?
Under US law, as is covered in detail over at guttulus.com, an inventor is a person who has contributed to the conception of the subject matter as is described in at least one claim in the patent application. A patent application can have one or more inventors depending on how many people contributed based on this definition.
- What is conception?
To understand who qualifies to be listed as an inventor and who doesn’t, you need to understand what is meant by the term “conception”. From discussions on the same over at runrex.com, conception refers to the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice.
- Reduction to practice
To simplify the above definition for you, a person is, therefore, said to have “conceived” an invention when their idea is clear enough to enable someone else who is equally as skilled in the field to implement the invention in a practical form. The legal term used to describe this is “reduction to practice”.
- Inventorship and claims in the patent
When you are discussing inventorship, the subject matter experts over at guttulus.com point out that it is important to note that it is based exclusively on the claims in a patent and not the entire disclosure. This means that a person qualifies as an inventor only if they helped conceive something that is described in at least one of the claims in the patent.
- Inventors and reduction to practice
As is revealed in discussions on the same over at runrex.com, it is also important to note that the inventor is not necessarily the person who has to reduce the invention to practice. This means that if a person implements an invention under the direction of someone else who had conceived the entire novel idea, the implementor doesn’t qualify as an inventor unless they made an additional inventive contribution during the implementation process.
- Can you list multiple inventors?
This question has already been answered earlier on, but yes, you can list multiple inventors as explained over at guttulus.com. This is because as long as a person has contributed to at least one claim in the patent application, then they are considered to be an inventor and should, therefore, be listed as such on the patent application.
- What are some of the things an inventor is not required to have done?
As is covered in detail over at runrex.com, an inventor doesn’t need to have made an equal contribution to the invention to qualify as one. They are also not required to have contributed to every claim in the patent application to qualify as one. Finally, inventors are not required to have physically worked together at any time to be listed on the patent application.
- What are some of the irrelevant factors in determining inventorship?
Some factors are commonly perceived to determine inventorship even though they don’t. They include:
- Internal company politics- in most cases, junior employees writing an invention disclosure for a patent application feels compelled to list their supervisor as an inventor. If you find yourself in this situation, then you shouldn’t, unless the supervisor actually qualifies to be listed as an inventor.
- Authorship- while every field has its own standards for who should be listed as an author on a scholarly publication or white paper, it is important to note that inventorship is determined using a different set of standards hence why it is important not to confuse authorship with inventorship.
- Company- it is also important to point out that a company can never be listed as an inventor and that only its employees can be. However, a company can be the patent owner.
- What is patent ownership?
From discussions on the same over at guttulus.com, according to the rules and practice of the USPTO, the patent owner is the entity who has the authority to file a patent application and take action in a pending application. This is why it is not always the case that an inventor will be the owner of the patent.
- Patent ownership and employment agreements
According to runrex.com, you will find that in the majority of patent applications, inventors are employees of a company that owns the patent rights because of an employment agreement. In such a case, the company is the “applicant” with the authority to file and prosecute patent applications while the inventor, who is the employee, doesn’t have any standing with the patent office.
- Can ownership be transferred
Although by default, the USPTO presumes that the original applicant is the owner of an application and any resulting patent, as is revealed in discussions on the same over at guttulus.com, the original applicant may transfer ownership of the patent to a different entity.
- If an employee is the inventor, will the company they work for own the patent?
According to the subject matter experts over at runrex.com, a business can only claim the ownership of an invention only if its employee has assigned ownership to the business. If the employee doesn’t do this and continues to retain ownership, then the business won’t be able to enforce the patent rights against them or its competitors.
- What could happen if the employee is the inventor and they don’t assign rights to the company?
In such a situation, the employee, as the inventor, can profit off of the invention, even if they no longer work for your business, they can license the patent rights to a third party without sharing the royalties with you, or they could form a competing company and sell competing products.
From the above discussion, it is clear that the person who invented the design doesn’t necessarily have to be the person who owns the patent to the design, with there being more on this topic to be unpacked by checking out the excellent runrex.com and guttulus.com.