Fortunately, it’s relatively easy to avoid the whole problem of claims of joint ownership by contractors, assistants and others who perform tasks for you. Have those who help you sign an agreement assigning any rights they may have in the invention to you.
You need to obtain an assignment before you get another person to help you with your invention. You especially need to use such assignments with any employees and independent contractors you hire. But you should also obtain assignments from other who provide guidance, ideas, suggestions and other help; this includes colleagues, friends and experts you consult with. You should develop assignment agreements (which should also contain confidentiality provisions) ahead of time to use with such people. You can find sample agreements to use with employees and independent contractors as well as agreements to use with others in Nolo books such as Profit From Your Idea: How to Make Smart Licensing Deals.
If You Can't Get An Assignment ...
If you are unable or unwilling to obtain an assignment, all is not lost. If someone falsely claims to be a joint inventor, you’ll be able to disprove these claims by keeping good records—principally an inventor’s notebook. Also, document your third-party contacts—for example, keep copies of correspondence and e-mails. If you have an invention conversation with someone, write a memo summarizing what was said and paste it into your inventor’s notebook (or keep it in a separate file). If your invention is successful, you may be surprised at how many people, including friends and colleagues, claim they contributed.
What if someone conceives part of your invention and you don’t have an assignment agreement? In this event, you have three options:
- share ownership with the other person, in which case you should sign a joint ownership agreement,
- acquire the other person’s ownership interest through an assignment or
- if possible, don’t claim those elements of the invention contributed by others—this way, you’ll be sole owner of the patent. Seek help from a patent attorney if you’re considering this option.
Portions of this article are derived from What Every Inventor Needs to Know About Business & Taxes by Attorney Stephen Fishman.