Patent It Yourself - PDF Archive

ChaPter 16 | OWNERSHIP, ASSIGNMENT, and LICENSING of INVENTIONS | 437
named on a patent application is legally irrelevant, although
the first-named inventor will be more prominent in the
printed patent.
If the joint applicants invented different parts of the
claimed invention, they should keep accurate records as to
what part each invented. That way, if one inventor’s part
is dropped later during the prosecution, they can change
the named inventors. For this purpose I have provided
Form 16-1, Joint Applicants—Statement of Respective
Contributions, (see Appendix 7). I strongly recommend
that all inventors complete this form whenever two or more
people apply for a patent.
Completing this form is straightforward: Enter the title
of the application or invention, then fill out each inventor’s
contribution in the right-hand blocks. Have each inventor
sign and date in the left-hand column adjacent to their
contribution. Each inventor should keep a copy of the form
(don’t file it with the PTO) and refer to it later—for example,
if the claims are changed in any way so that one inventor’s
contribution is no longer claimed, the inventors should
remove that inventor from the application. See Patent Rules
48 and 324. Joint inventors need not have worked together
either physically or at the same time, and each need not
have made the same type or amount of contribution. To
qualify as a coinventor, as stated, an inventor need merely
have contributed something to at least one claim of the
application, even if it’s a dependent claim.
Another problem sometimes arises when two or more
persons work on an invention, but not all of them are
named as applicants in the patent application. Disputes
regarding inventorship with the omitted inventor(s)
sometimes arise later. For example, a model builder may
later come back, after an application is filed, and claim to
have been wrongfully excluded as a joint applicant. As I
stated in Chapter 3, the best way to avoid such problems is
for all inventors to keep a lab notebook—that is, a technical
diary, which faithfully records all developments and is
frequently signed by the inventor(s) and witnesses. In that
way the complaining model builder can be answered by
positive proof from the true inventor(s). Also using the
Consultant’s Work Agreement (Form 4-3) will eliminate
many potential disputes since it requires the consultant to
assign (legally transfer ownership of) all inventions that
they make to the inventor who hires the consultant. Absent
such documentation, or agreement, expensive disputes can
arise, with only vague memories to deal with.
It’s important to include in your application all the
inventors who are true inventors and to exclude those who
aren’t inventors. If it is discovered later that your inventorship
is incorrect, and that the mistake resulted from bad
faith, your patent can be held invalid, although this rarely
happens. (If you do discover that the wrong inventor(s) is
(are) named on a patent or patent application, this can be
corrected under Patent Rules 48 or 324.)
Common Misconception: If you want to make your financier
a 50% owner of your invention, it is okay to do this by filing
the patent application in both of your names.
Fact: A U.S. patent application must be filed in the name(s)
of the true inventor(s) only. There are several legitimate
ways to convey an interest in your invention to a noninventor.
(See Sections E and G, below.)
Common Misconception: If you came up with a bare concept
for a valuable invention and your associate “took your ball
and ran with it”—that is, built and tested the invention after
hundreds of hours of work leading to final success, then
your associate must be named as a coinventor with you.
Fact: As stated above, only the true inventor(s)—that
is, the one(s) who came up with the inventive concepts
recited in the claims—should be named as applicant(s).
An associate who did only what any model maker would
have done should not legally be named as coinventor, no
matter how much work was involved. On the other hand,
if your associate contributed inventive concepts that made
the invention workable, and that are recited in one or
more claims, then the associate should be named as a joint
inventor with you.
Changing Inventorship
If you find that the incorrect inventors are named in
a patent application or patent, for example, due to a
change in the subject matter claimed, or discovery of an
earlier error, you can correct inventorship by following
the procedures under PTO Rule 48 (patent applications)
or Rule 324 (patent). At least one original inventor must
always be retained, that is, it is not possible to change
inventorship so that all inventors in the application as
originally filed are changed.
C. Joint Owners’ Agreement
Problems commonly arise in situations where there are
two or more inventors or owners of a patent application
or patent. These include questions as to who is entitled
to commercially exploit the invention, who is entitled to
any financial shares, what type of accounting must be