If you recall, in our discussion of patent rights, a patent is essentially a negative right.The owner of a patent has the right to tell others that they cannot practice their claimed invention (as set forth in the claims of their patent).There are many issues that can be litigated over when disputing a patent.One commonly litigated issue pertains to inventorship.What is inventorship?In the context of patent law, an inventor is one who contributes to the concept of the invention.Pretty broad, eh?!While this test is seemingly simple, there have been numerous high-profile patent suits over the years.Often, these disputes involve individuals who were allegedly, mistakenly or purposefully excluded as inventors.A wrongly excluded inventor can file a lawsuit to have their name added as a co-inventor.
One particular scenario that we encounter frequently pertains to companies who wish to add an individual to a patent as an inventor for purposes of attribution.For example, maybe the CEO or VP of the company has an ego the size of Texas and feels the need to be listed on every patent as an inventor, even though he never contributes to the inventive process.What about a wife who wants to add her husband as an inventor, even though he was never involved in the conception or reduction to practice of the invention?Her motives may be forthright, but what ramifications may exist for the patent?
Why do we encounter these scenarios often?Because patentees and applicants do not recognize that there is a difference between OWNERSHIP and INVENTORSHIP.To be sure, any person or entity can be the rightful owner of a patent or patent application.In many scenarios, individuals mistakenly believe that in order to own all or part of a patent, someone must be listed as an inventor.This is a false belief that can have dangerous consequences. Whatever your reason for wanting to include an ineligible person on a patent application as an inventor, resist the urge.Wrongly adding someone as an inventor can, in some situations, result in your patent being invalidated.Thankfully, errors in inventorship can be corrected, assuming there was no deceptive intent when listing another person as an inventor.
Ownership of a patent initially rests with the inventor or inventors.When multiple inventors are listed, each inventor has a 100% undivided share of the patent.Each inventor/owner can freely license or sell their portion of the patent as they see fit.Thus, a non-inventor can receive all or a portion of an inventor’s rights in the patent.The process for transferring rights in a patent from one party to another is referred to generally as an assignment.Thus, when compensating someone (either monetarily or for purposes of attribution), ownership of the patent can be used rather than falsely listing someone as an inventor.For example, the husband and wife can co-own the patent if the wife assigns 50% ownership of the patent to her husband. If you have questions or concerns about how to determine inventorship or ownership of patent, feel free to reach out.
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