Do You Really Own Your Invention for Patent Enforcement Purposes?

Understand the ownership and related requirements for suing for patent infringement.

By , Attorney

Imagine that several years ago, you invented a clever devicea special suction cup shelf to hold your soap in the shower. One day, you walk into your local grocery store and are shocked to see a similar device being sold in the home goods aisle. Can you sue the manufacturer for stealing "your" idea? The answer turns on your patent rights over the device.

Are You Really the Inventor of a Patented Idea?

Lots of people come up with ideas. But merely having an idea does not confer any special rights or ownership. In order to be able to sue for an infringement of your invention, you must have a patent over the device. Note that a patent is different from other forms of intellectual property, like copyright and trademark. Patents are rights granted by the U.S. government, specifically the U.S. Patent and Trademark Office (USPTO), to an inventor, to exclude others from making, using, selling or importing a particular invention without permission. If you own a patent and another person or entity infringes on it without permission, you can bring an infringement lawsuit under 35 U.S. Code § 271.

Importantly, there are circumstances when you may not actually own the patent, even if you were the inventor. "Inventorship" and "ownership" of an invention are not the same in patent law; the inventor might be listed on the patent application, but the inventor may have relinquished rights to the patent. This is particularly common in situations when the inventor works for a company and creates the invention during employment. In that situation, the patent would usually be owned by your company, and not by you, meaning that you would not be entitled to sue for infringement.

In the example above, imagine that you came up with the idea for the shower suction cup while working for a medical device research company. That company could likely claim ownership of the patent, and indeed, likely included a provision in your employment contract specifically assigning to it any rights in employees' inventions. You would thus not be able to sue the maker of the "infringing" suction device; only your former employer could do so.

Similarly, someone who paid you directly to invent something might own the resulting patent (depending on the language of your agreement, if any).

Are You the Sole Inventor of the Patented Idea?

Many inventors are "solo" inventors. You're a solo inventor if you conceive your invention completely by yourself, and are not anyone's employee. If you qualify, you will be the unquestionable sole inventor and original owner of your invention.

However, many inventions are the product of two or more inventors, who jointly own the patent. All inventor names can be listed on the patent. Absent an agreement to the contrary, joint owners each own a pro-rata, undivided interest in the entire invention—for example, if you are one of three joint inventors, each of you owns a one-third interest in it.

Any joint owner of a patented invention can make, sell, or use the invention without the other owners' consent and without compensating them. For example, you can enter into a non exclusive license with someone to manufacture and sell the patented invention and keep all the revenue.

Every joint owner must be involved in any action before the PTO, such as filing a patent application, and they must all join in any patent infringement suit. In practice, this means that you must get your fellow patent owners to consent to sue if there is infringement of your invention.

Is Your Patent Still Valid?

Even if you were the true and only inventor of the device, your patent might not be valid. One of the most common ways that a once-valid patent can become invalid is if the inventor fails to pay the required maintenance fees. Typically, fees are due around three, seven, and eleven years after your patent is issued. The full fee schedule, with up-to-date amounts, is available on the USPTO's website.

Another common way for a patent to lose validity is if it expires. Unlike some forms of property ownership, patent rights do not last forever; they have strict time limitations, after which time others are legally permitted to use "your" patented claims. Most patents are good for 20 years from the filing date of the application (though there are exceptions depending on the type of patent and the date it was filed).

Is Patent Litigation Worthwhile?

Let's say you clear these first couple hurdles―you are the inventor of the suction device, and you have a valid patent. That does not necessarily mean that you should sue.

First, patent litigation is expensive. Perhaps more than some other types of litigation, patent lawsuits often require both specialized attorneys and expert witnesses to testify about the invention. Consider whether you or your small business has the resources to engage in a legal battle, or whether your capital is best spent on developing a new invention.

Second, patent litigation takes time. Litigation is a slow and often bureaucratic process. You'll need to spend substantial time gathering documents, meeting with attorneys, and appearing in court. Consider whether this is really the best use of your time, versus focusing on other avenues of business development.

Finally, consider your broader commercial interests. If you "invented" and patented this device, but have not bothered to produce or market it in several years, your business interests might not really require the patent. There's little sense fighting for a patent that you have no intention of using. Finally, remember that even if you're victorious in your patent litigation, the defendant may not have the resources to pay, and you'll spend further time trying to enforce your judgment.

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