Jointly Created Inventions Under U.S. Patent Law

What if more than one person is responsible for "inventing" the new technology, drug, machine, or process?

Many assume that all great innovations are the work of a single person; a lone figure, hunched over in a laboratory, who has a "Eureka!" moment and creates the next great technology, machine, or medicine. While this is sometimes within the realm of truth, many inventions are the product of collaboration between two or more people. If you are working on an invention with others, you might wonder how the concept of co-inventing intersects with patent law, which guarantees certain exclusive rights to an inventor.

How One Obtains a U.S. Patent

Before delving into co-inventions, it is helpful to have a basic understanding of what patent law does. Patents are an important form of intellectual property, which confer exclusive rights over qualifying inventions. While the precise length of patent protection varies, utility patents (the most common type of patent) ordinarily last for 20 years. For most inventors, this is enough time to gain substantial advantages in the marketplace.

To obtain a patent, you must file a patent application with the U.S. Patent and Trademark Office (USPTO), a federal agency. The USPTO's patent examiners will review the application for a variety of legal and technical requirements, and then might contact you with questions or requested modifications before (hopefully) issuing the patent.

To qualify for a patent, an invention must be meet a variety of requirements, including that it is "novel," "non-obvious" and "useful."

The patent application process is not always easy. In fact, it can take several years for the USPTO to issue a final patent. To understand the patent application and review process, the USPTO offers a helpful online guide.

When you submit your application, you will be required to pay certain mandatory fees. While these are normally a few hundred dollars, they depend on the nature of the invention. If you have a co-inventor, you might wish to consider splitting the fees 50/50.

How Co-Inventors Can Obtain a Patent

What if more than one person is responsible for "inventing" the new technology, drug, machine, or process? Under 35 U.S.C. § 262, "In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners."

What exactly does this mean? Basically, in a joint patent, all inventors share the same bundle of rights. These include the right to manufacture the patented invention, the right to use it, the right to sell or license it to others, and the right to sue over its infringement by third parties.

Consequently, having multiple co-owners of a patent can raise significant legal issues. A co-owner who wants to assign (license or sell) an ownership interests in the patent to a third party can do so without the consent of the co-owners.

Similarly, if one co-owner wishes to allow a third party to use the invention, that person has the unilateral right to make that determination (though profits would likely need to be shared among the co-owners).

A final issue to consider: To sue a third party for infringement of a patent, all co-owners must typically agree to join the lawsuit.

All of this translates to the fact that co-ownership raises numerous challenges for businesses, especially due to the fact that decision-making is spread across multiple parties.

Note that "co-inventors" are not always "co-owners." To be "co-owners" of a patent, all owners must be listed on it when it's issued by the USPTO. Sometimes, if two people work together on an invention, they will agree that only one of their names will appear on the patent.

Importance of Clarity in Co-Invention Relationships

Outside of large companies where entire departments might collaborate on an invention, co-inventors are often close friends, colleagues, or associates. While discussing the particulars of patent ownership might not seem natural, these discussions can help both you and your co-inventor clarify your respective rights.

Although co-owners can jointly own a patent, this is not necessarily the easiest method of organization. Your respective rights can be clarified by contract (a written agreement), such as a joint invention agreement.

For example, before you both begin working on some new invention, consider how these costs will be split (for instance, on supplies, equipment, and so on). Who will pay for the USPTO fees, as well as any legal fees if you both decide to consult with an experienced intellectual property lawyer? And if a patent is issued, who will have the ability to decide how it is used (in other words, if one of you wants to sell it and the other does not)?

These sorts of issues are best resolved through discussions between you and your co-inventor at or near the outset of your relationship.

While it is not always necessary to hire a lawyer in order to obtain a patent, you might find it useful to speak with an experienced intellectual property attorney, who can walk you through the issues and help you consider what approach would best suit you.

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