Voluntary Joint Inventorship and Ownership
Voluntary joint ownership comes about whenever two or more people deliberately jointly invent something. (Joint invention can also come about without your intending it to happen; see below.)
To be a joint inventor and therefore joint owner of the patent rights in an entire invention, a person must make a contribution to at least one novel and nonobvious concept that makes the invention patentable. In patent drafting terms, the joint inventor must contribute something substantial to one of the major or minor patent claims. That’s all that’s required—a substantial contribution to the conception of one claim; this is so even though the invention contains many patent claims.
It is not necessary that joint inventors work in the same place or at the same time. Nor is it necessary that the idea for the entire invention occur to each. One joint inventor may take a step at one time, the other an approach at different times. One may do more of the experimental work while the other makes suggestions from time to time. The fact that joint inventors play different roles and that the contribution of one may not be as great as that of another is unimportant so long as each makes an original contribution to the final solution of the problem solved by the invention.
EXAMPLE: Steve and Rich invented a new type of folding bicycle. Steve conceived the basic idea for the invention and solved the problems of how to easily fold the both the bike frame and handlebars into a 14” by 27” package. Rich conceived a new type of folding pedal. They then promptly filed a patent application and obtained a patent two years later. Steve and Rich are now joint inventors and joint owners of the entire patented invention, even though Steve contributed more than Rich. Since they are joint owners, unless they sign an agreement to the contrary, both can license the invention without sharing the license royalties with the other. This means that, if he’s a good salesman, Rich could earn more money than Steve even though Steve contributed more to the invention.
Involuntary Joint Inventorship and Ownership
Joint inventorship,and joint ownership, can come about even though you don’t want it. This often leads to expensive and time-consuming patent litigation. Consider the following true example:
EXAMPLE: Dr. Yoon, a surgeon, conceived of a vastly improved trocar, an instrument used for tiny-incision abdominal surgery. In the course of development, Dr. Yoon enlisted the help of an electronics technician named Choi, who worked as an unpaid assistant and was neither Yoon’s employee nor an independent contractor. In the course of this work, Choi contributed a novel, though small, element to the invention. Dr. Yoon put the whole invention together and patented it, naming himself as the sole inventor and owner. The trocar became a big hit among surgeons and was worth a lot. Dr. Yoon licensed the trocar to Ethicon, Inc. In the meantime, Choi decided he had ownership rights too because he was a joint inventor along with Dr. Yoon. Choi licensed the trocar to the United States Surgical Corporation. Ethicon and Surgical both filed patent lawsuits. After extensive litigation, Surgical and Choi won. The court found that Choi had contributed to two of the 55 claims in Dr. Yoon’s patent and was therefore entitled to be a joint owner of the entire patent. As such, Choi had the legal right to license the invention to Surgical. To add insult to injury, since Choi and Dr. Yoon had never made any agreement regarding joint ownership rights, Choi did not have to give Yoon any part of the royalties he received from Surgical. (Ethicon, Inc. v. United States Surgical Corporation, 135 F.3d 1456 (Fed. Cir. 1998).)
Portions of this article are derived from What Every Inventor Needs to Know About Business & Taxes by Attorney Stephen Fishman.
For more information:
For assistance with the preparation and filing of a provisional patent application, see Nolo’s Online Provisional Patent Application.