Patents

Patents

Patent Ownership

The general rule in the U.S. is that an individual owns the patent rights to the subject matter of which he is an inventor.

Exceptions to when the inventor owns patent rights:

  • An employer owns the patent rights if there is an express contract to that effect
  • An employer owns the patent rights if the employee was hired for the purpose of inventing or solving the problem to which the invention relates

Transfer of Patent Rights

The inventor-employee must assign his patent rights to the employer in the contract. The inventor is the first person that reduces the invention to practice, i.e., develops the idea for the invention into something that actually works.

In other words, mere conception of the invention is insufficient to bestow priority of inventorship; there must also be reduction to practice. The inventor is presumed to be the owner of a patent application for the invention, and any patent that may issue as a result of that application, unless there is an assignment, e.g. to the inventor’s employer.

Absent an express agreement otherwise, each joint inventor is presumed to have an undivided equal interest in the invention (and any patent covering the invention), and can exploit or transfer that interest without accounting to the other owner or owners.

We have experience with advising clients on ownership and licensing issues related to the exploitation of their patented invention and can assist you with review and drafting of ownership agreements, licensing agreements or co-development agreements, which may define who will own, protect, and patent the rights created during the relationship and upon completion of the invention.

Related Services: Trademark Registration Protection; Copyright Protection; Intellectual Property Protection; Trade Secrets; License Agreements; Confidentiality Agreements; E-Commerce, Internet and Websites

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