Ownership vs. Inventorship of a Patent

By David Carnes

A patent grants the owner of the patent a temporary legal monopoly on a bundle of rights related to an invention, including the right to profit from it. The inventor, however, is not always the owner of a patent. Patent law provides a number of ways in which someone can obtain patent rights over technology invented by another.

The "First-to-File" versus "First-to-Invent" Systems

Sometimes, two people working independently of each other invent the same invention. U.S. patent law applies a "first-to-invent" standard, meaning that the original inventor may invalidate a patent granted to a later inventor, even if the later inventor filed his patent application first. When two inventors file patent applications on the same invention, the Board of Appeals and Interferences at the U.S. Patent Office may have an interference hearing to determine who conceived of the invention first, and whether the inventors were diligent in reducing their inventions to practice. Most of the rest of the world applies a "first-to-file" system, meaning that a subsequent inventor is entitled to patent protection as long as he files a patent application before the original inventor does. In such a case, the original inventor will not own the patent.

Patent Licensing

Once an inventor files a patent application, he is free to market his invention to potential manufacturers and distributors. If the patent is eventually granted, patent protection will be extended retroactively to the application filing date. Once a patent license is granted, the licensee may manufacture or sell the patented technology. A patent license, however, does not transfer full ownership rights -- for example, the licensee's right to sue third parties for infringement is limited by law.

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Works for Hire

An employee may enter into an employment contract that contains a work-for-hire clause. A work-for-hire clause provides that patent rights to any technology invented by the employee in the line of duty belong to the employer as soon as the technology is created. If a work-for-hire clause applies, only the employer is entitled to apply for a patent on the technology, and any patent granted for the technology will belong exclusively to the employer. Many technology companies have their employees sign employment agreements that contain work for hire clauses.

Patent Assignment

Instead of licensing the patented technology, an inventor may simply assign the patent to another. A patent assignment transfers all right and title to the patent to someone else. This means that even the inventor must obtain a license from the assignee to continue manufacturing or selling the technology. Once the assignment agreement has been signed, the assignee is required to register the assignment with the U.S. Patent and Trademark Office by filing USPTO Form 1595. An inventor may assign a patent to receive a large lump sum payment rather than wait years for royalties to trickle in. Assignment is especially likely if the inventor is more skeptical of the invention's marketability than the assignee is.

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What Does Patent Mean?

A patent is a legal monopoly on the use and benefit of a unique invention. Patent rights are granted by national governments after a lengthy application and examination process. The patent holder may be the inventor or, as in the case of a work for hire, the inventor’s employer. In the U.S., patents are granted by the U.S. Patent and Trademark Office.

What If a Full Patent Is Not Approved and You Have a Provisional Patent?

In the United States, intellectual property rights are protected by the Constitution. Creative individuals are allowed the exclusive right to control and profit from their works, even if only for a specified amount of time. The U.S. Patent and Trademark Office (PTO) awards patents to inventors upon making a finding that an invention is unique and non-obvious. The patent application process is complicated and expensive, and it typically takes the PTO more than a year to complete its investigation and make a decision. One of the options that an inventor has to control the process is to submit a provisional patent application in lieu of a full non-provisional application; however, the provisional patent application process can mislead the filer into thinking he has existing rights that can be protected.

Legal Document That Protects the Rights of an Owner's Invention

The owner of an invention can protect his right to make, use and sell his invention by obtaining a patent. Once an application is submitted and approved by the U.S. Patent and Trademark Office, it serves as proof that the owner enjoys patent rights over his invention.

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