Inventorship and ownership of an invention are not the same thing. The inventor is the original owner of an invention. The inventor must be listed as such on any patent application filed with the PTO. This is so even though the inventor no longer owns the patent rights in the invention—which is usually the case with employee-inventors.
Inventor is original owner
As the original owner, the inventor has the right to use, make and sell the invention. But the vast majority of inventors are unable to retain these rights because employers and others acquire ownership from them. The people or companies who acquire ownership are not inventors; but, as invention owners, they—not the inventor—have the legal right to make, use or sell the invention.
Who is the inventor?
Historically, the inventor is the person who conceives of the invention and first demonstrates that it can be "practiced" (or used) by others. Prior to enactment of the first-to-file rules in the America Invents Act (March 2013), the first inventor to conceive and practice the invention was entitled the patent. Now, the first to file is entitled to the patent. However, the person listed as the inventor on the application should be the person who conceived and practiced the invention described in that application.
Conception of an invention occurs when the inventor imagines it so completely that all that is left to do is build and test it. In the words of one court: “Conception is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.” (Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223 (Fed.Cir. 1994).)
Giving someone suggestions, advice, or ideas is not enough to be an inventor. Nor does building and testing an invention conceived by another make you an inventor. Conceiving all or part of the invention is what matters.
EXAMPLE: On November 10, 1877, after thinking about the problem of recording speech for several months, Thomas Edison sketched a drawing of a lathlike device with a hand crank that turned a large, grooved cylinder wrapped in tinfoil mounted on a long shaft. At this moment, Edison’s conception of the phonograph was complete. He completely imagined it so that all that was left to do was to reduce it to practice.
You can’t conceive an invention and just keep the idea in your head. To become an inventor, you must explain how to make and use the invention.
What if you’re not an inventor?
If you don’t qualify as an inventor, you can’t be the original owner of an invention. But you can obtain ownership from the inventor if:
- you acquire ownership though an assignment, or
- someone who works for you as an employee or independent contractor creates an invention, or
- you are part owner of a business entity that owns an invention.
Note, that under the America Invents Act (“AIA”) the assignee (the person or company to whom the inventor assigned rights) can now be listed as a the patent applicant (the “obligated assignees”).
For assistance with the preparation and filing of a provisional patent application, see Nolo’s Online Provisional Patent Application.
Portions of this article are derived from What Every Inventor Needs to Know About Business & Taxes by Attorney Stephen Fishman.