Making sure you own your patent
With the ownership of a patent comes powerful rights including the right to stop others from exploiting an invention. Consequently, and unsurprisingly, it is not uncommon for a dispute to arise as to the ownership of a patent. It is important that you are sure that patent ownership issues are watertight before filing a patent application.
Ownership of a patent starts with the inventor or inventors. Unless the inventors rights are transferred to another, the patent when granted will be owned by the inventor or inventors. For example, an inventor who is employed to invent during the normal course of his duties to his employer is not entitled to own the patent. In this case, the employees rights to the patent flow to the employer.
Ownership of a patent can be assigned. Consequently, it is possible to establish quite long chains of title which transfer ownership of the patent to a person or company remote from the inventor. Completion of a patent assignment can be part of a sale of the patent.
Because the chain of title starts with the inventor it is very important that the correct inventor or inventors be identified before the application is filed.
In determining who is an inventor, you should conceptually divide the invention process into two parts. The first part is conception of the invention. Conception is considered to be the touchstone of inventor ship, and can be loosely regarded as the intellectual steps of the invention process. That is, conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention.
The second part of the invention process is reducing the invention to practice. Once the invention is conceived only a person of ordinary skill would be required to reduce it to practice. Reduction to practice does not involve extensive research or experimentation.
The person or people who are involved in the conception of the invention are the inventors, at least for the purpose of a patent application. A person who does no more than reduce the invention to practice is not an inventor.
Some examples of people likely to be considered inventors include:
- a person who conceives of the invention; and
- two or more people who work in aggregate to conceive of the invention.
Some examples of people unlikely to be considered inventors include:
- a person who does no more than reduce the conceived invention to practice by exercising ordinary skill;
- a technician who works under direction of a person that conceived the invention;
- a supervisor of the person who conceived of the invention;
- a person who merely participates in discussions regarding the invention; and
- a person who conceived of a desired result but was not able to realise the means to achieve it.
An invention, in the context of the patent application, is defined by “claims” which form part of the patent specification prepared by the patent attorney. Consequently, it is not until the claims are drafted that inventors can be finalised. In any case, the inventors should keep records of their contributions as they develop their ideas so that their entitlement to own the patent can be scrutinised.
For more information contact Justin Blows, firstname.lastname@example.org