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What Is It? |
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Who Owns It? |
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Documentation |
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Confidentiality |
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Licensing |
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Tax Advantages |
There may be several owners of an invention, as well as other people or organizations who could have a legal claim on it. These include:
The inventors of record, or the "inventor(s)" are those who, according to the rules of the US Patent and Trademark Office, have contributed to the essence of the invention. Just who is included in this group is usually decided between the participants and their patent attorney. Just because someone "works on" the invention does not mean that individual is an inventor of record. In fact, including people who did not make specific contributions may weaken the patent. If there is a non-inventing individual who should have the same rights as an inventor of record, an assignment is the proper way to accomplish this.
It is very important to remember that all inventors of record (and full assignees) each have an undivided right to the invention. That means that in the case of multiple inventors, any of the inventors, or any group of them, in effect owns the entire invention and can sell or license it regardless of the wishes of the others. Therefore, when working on an invention where there is likely to be more than one inventor, it is highly advisable to have an agreement, preferably in writing, as to how the invention will be managed.
Assignees are those to whom the inventors of record transfer an undivided right, making them, in effect, equal to an inventor in their ownership rights. Lesser rights can also be contractually transferred, such as the right to receive royalties but not a complete right of ownership, but these lesser rights do not technically make their recipient an assignee, which can have adverse tax consequences.
An employee may or may not have to assign all rights for an invention to his employer. This can only be determined by looking at one's employment contract and the employer's patent policy. If the employer is an institution such as a university, then the usual presumption is that the invention belongs to the institution, regardless of whether the invention was developed on the individual's own time. In some cases, the inventor can obtain an institutional release if the invention is not related to the inventor's usual line of work or research and if no institutional resources were involved in developing the invention. This is determined on a case-by-case basis.
Inventions conceived while the inventors are federal government employees or while accepting federal funds, such as grants, are usually considered the property of the inventor, but the government may have certain rights, such as royalty-free use. This may not apply, however, if the invention is developed as a result of normal employment; as usual, competent advice should sought for your specific case. Employees of state or local governments should enquire into their particular patent policy.
NOTE that this material is only a general guide and should not be relied upon in any specific case. If there is any question as to the ownership of an invention, competent advice or counsel should be sought for the specific case.