Justin Krieger
Frequent questions among potential inventors relates to who should be considered an inventor on a patent application and who owns the invention—especially if their invention is in a different field from their work-related research, or if they came up with their invention on their own time. The answer to these questions is highly fact specific and frequently difficult to determine.
How do you determine if someone should be considered an inventor?
To be a named inventor on a patent application, an individual must show that they contributed significantly to the conception—the definite and permanent idea of the invention—or reduction to practice of at least one claim[1] contained in that patent application[2]. To be a joint or co-inventor, an individual’s contributions must have arisen from some element of joint behavior, such as collaboration or working under common direction with the other inventor(s)[3]. In practice, it can be difficult to determine whether an individual’s contribution is sufficiently significant to rise to the level of a co-inventor. For this reason, consultation with a licensed patent attorney or agent is highly recommended to assist in determining if an individual should be deemed an inventor or co-inventor on a patent application.
In the absence of an agreement, who owns my invention?
The general rule regarding initial invention ownership is that ownership initially vests in the inventor or in the co-inventors (if there is more than one inventor). Without an agreement to assign their invention, co-inventors would likely share their ownership interest in their invention. Perhaps surprisingly, in the absence of an agreement otherwise, a co-inventor may be free to separately license rights in a patent covering their invention to third parties without consulting with their co-inventors. But if the inventor(s) have signed an agreement to assign their inventions to their employer, then they would typically need to cooperate in executing any required documents to perfect ownership in their patent application to their employer.
What is an agreement to assign an invention, and must I sign it as a condition of employment?
When a scientist signs onto a corporation or university as an employee, they are frequently faced with a slew of HR and legal documents to sign. Often among those documents is an agreement to assignment any inventions that they develop during the course of their employment to their employer as a condition of employment. The specific terms of these agreements can vary greatly, and there are no hard-and-fast rules on the effect of these agreements. The express language in such agreements usually controls. That said, to ensure that a potential employee understands the legal significance of such agreements, employers should give their potential employees sufficient time to consult with an attorney before signing them. And a potential employee should feel completely comfortable requesting time to review these agreements with their attorney to fully understand them before signing. That said, at least in the United States, a potential employer is usually free to require a potential employee to assign future inventions as a condition of employment.
Notably, even without such an agreement, a firm may have the ability to claim a shop right to an employee’s invention. A “shop right” allows an employer to use an employee’s invention without payment if the invention was made using the employer’s time, facilities, or equipment. Also, in some limited circumstances, an employer may be able to claim ownership in an invention, even without an agreement to assign the invention, if the employee was “hired to invent” for the employer.
What if I signed an agreement to assign my invention, but my invention is unrelated to my corporate research?
Here too, the answer to this question depends largely on the language in the relevant agreement to assign. But if an employee has invented something unrelated to their employment or to the employer’s business, on their own time and without using the employer’s facilities or resources, then it is likely that ownership in that invention will vest solely in the inventor. Of course, this determination is highly fact specific, and attorney consultation is highly recommended.
Determining inventorship and invention ownership can be quite complicated and involve complex issues of federal and state law. For this reason, consultation with a licensed patent attorney or agent is highly recommended in answering these and similarly questions.
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[1] A claim is a numbered sentence at the end of a patent or patent application that defines the scope of the invention being claimed. [1] Blue Gentian, LLC v. Tristar Prods., 70 F.4th 1351, 1358 (Fed. Cir. 2023). [1] Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).