Patent It Yourself - PDF Archive

436 | PATENT IT YOURSELF
Inventor’s Commandment 31
File a patent application in the names of all actual
inventors, but no one else. To transfer part or the entire
ownership of an application or patent, the inventorapplicant(s)
must sign an assignment, and to give
permission to practice a claimed invention, they must
use a license agreement.
Inventor’s Commandment 32
If a patent has several owners, absent any agreement
to the contrary the law permits any owner to practice
the invention without accounting to any other owners.
All joint owners should thus consider signing a Joint
Owners’ Agreement requiring cooperation and sharing
of any profits from the patent.
In the simplest possible situation, a single inventor invents
something, obtains a patent on it, manufactures it, and
markets it directly to the public for the full period that
the patent remains in force. In most instances, things are
not that simple. Two or more people may be involved in
the conception of the invention, and many more in its
development and marketing. A business may want to use
the invention and be willing to pay large royalties for the
privilege. Employees and employers may disagree over who
owns a particular invention that was developed at least
partially on company time or with company materials or
facilities. Thus, the entire question of invention ownership
and utilization can become complex.
In this chapter, I outline some of the ways to deal with
these various ownership questions and the common
agreements that are used in the process. However, because
the subject of invention ownership, licensing, and transfer is
complicated, you’ll probably want to retain a lawyer, if only
to review your plans and paperwork.
A. The Property Nature of Patents
Before I begin explaining who owns an invention, it might
be helpful to review exactly what patent ownership means.
Think of a patent as a valuable property right. This right,
as I’ve stressed elsewhere in this book, gives you the right
to exclude others from manufacturing, using, selling, and
importing your invention. This means that you have, in
effect, an enforceable legal monopoly on the invention
for the i n-force period of the patent. If you do grant a
company permission to use your invention, the law terms
this permission a “license.” As with most other intangible
economic rights—such as the right to operate a business,
the right to withdraw money from a bank account, and
the right to vote stock in a corporation—patent rights, or
a portion of them, can be sold to others, or licensed for a
particular use over a particular period of time.
An invention has virtually no economic value to its
inventor unless it is patented, sold, licensed, or used
as a trade secret, or it has some other protection under
intellectual property laws (see Chapter 1, Sections G to S).
Most inventors find it difficult to make sales of nonpatented
inventions or inventions protected under trade secret law.
For that reason, patent ownership and invention ownership
often amount to the same thing.
B. Who Can Apply for a Patent?
As stated in Chapter 10, Section E2, only the true inventor(s)
can apply for a patent. As mentioned in Chapter 1, when
it comes to eligibility to apply for a patent, the status of
the applicant(s)-inventor(s) makes no difference, so long
as each is a true inventor. That is, an applicant can be of
any nationality, sex, age, or even incarcerated, insane, or
deceased. (Insane and deceased people can apply for patents
through a legal representative.)
What happens to patent ownership if more than one
person is involved in a particular invention? If other people
are involved in the inventing stage, they’re considered joint
or coinventors. Most often, the trick is to determine what
type of activity constitutes invention. For instance, suppose
one person came up with the concept of the invention,
while the other merely built and tested it—that is, did not
contribute any inventive concepts but merely did what any
skilled artisan or model maker could do. In this situation
the second person is not a coinventor. Similarly, financiers,
or others who provided business advice, but not technical
input, should not be listed as coinventors.
On the other hand, suppose one person came up with
the idea for an invention and a model maker then came
up with valuable suggestions and contributions that went
beyond the skill of an ordinary model maker or machinist
and made the invention work far better. In this situation
both people should be named as coinventors on the patent
application (see Chapter 10, Section E2), provided the
model maker’s contribution is present in at least one claim.
The PTO and the courts don’t recognize degrees of
inventorship. Thus, the order in which the inventors are