Patenting With Partners: Who Gets Credit In Co-Patents?
Much like other property - a vacation home, a boat, etc. - patents can be jointly owned, or shared. When you have two or more contributors to an invention idea, you could be in a co-patent or joint patent situation.
Co-patenting can reveal itself in a number of circumstances including when an invention has multiple inventors, or even several proprietors of the idea (for instance, one "friend" had the idea and another iterated on it).
Also, if more than one party is working to develop a technology, product or process, the resulting patents may be co-assigned.
Inventorship of a patent defines the combination of the people who contributed towards the conception of an idea or invention; this is highlighted in the patent.
Inventorship is non-negotiable and not transferrable.
As a rule of thumb, it is a must to name anyone who contributed to an invention or invention idea in the patent application for the invention.
While inventorship is non-negotiable and not transferrable, the ownership of a particular invention idea or invention can be transferred or negotiated.
Co-Inventors, Joint Inventors, And Inventing With A Partner
Basically, in a situation where two or more people work on an invention, each of the people that contributed to conceive or manufacture such invention will be listed as “co-inventors” or “joint inventors” of the invention when filing a patent application.
When the patent is issued, it will bear the names of all of the contributors.
Conversely, if the idea for the invention was conceived by one person, while the other person(s) only followed instructions to translate the idea into practice and a viable invention, the conceiver of the idea gets the sole right to the invention as the inventor.
This is typified when engineers or workmen are employed to create a working prototype of an invention.
If the engineers simply followed and carried out the instructions of the conceiver of the idea to make the prototype or the final invention, the engineers may not be listed as co-inventors or contributors.
In the same vein, sometimes an employee of a company conceives an invention idea while the company takes the full responsibility of financing the research, invention development and the costs associated with filing a patent application.
Naturally, the employee is listed as the inventor upon the issuance of the patent.
However, such right to invention ownership is often transferred to the company because of the employee’s Employment Agreement.
As earlier established, when there are two or more contributors to an invention or invention idea, each contributor is listed as a co-inventor when the patent is issued.
With co-patents, each of the inventors jointly owns the patent.
According to patent laws, this joint ownership of the invention grants each of the inventors the right to produce, license, sell or market the invention without having to share the proceeds with the other co-inventors.
Also, to take any action that has a direct bearing on the patent, each of the inventors does not require the permission of the other co-inventors.
Problems arise in this arrangement when there is a disagreement between the co-inventors about the proper way to utilize the patent.
Apart from this, a falling out might occur if it so happens that one of the co-inventors decides to go ahead with the commercialization of the invention, while the others do not want to participate anymore.
Often times, selling or licensing the invention to a 3rd party or another company creates problems for co-inventors.
This is especially true when there is an uncooperative inventor in their midst who could also decide to license or sell the same invention to a rival company.
This inevitably creates a competition between two rival companies for the sale of the same patented product.
To both companies, the licensing deal therefore becomes less valuable because of the inherent competition. Hence, they won’t fancy investing in the invention.
Formation Of A Legal Entity
To mitigate against the occurrence of disagreements between co-inventors, the formation of legal entity is often necessary.
With the formation of a legal entity, each inventor owns an interest or share.
Also, invention ownership can be succinctly transferred. The legal entity describes the following:
With a legal entity, the co-inventors have a bigger chance of attracting licensees and potential investors since only one entity is in place, instead of multiple inventors.