Patent Inventors
Who Should I List as an Inventor on a Patent Application?
An inventor on a patent application is anyone who provides a meaningful contribution to the novelty of an invention where that novelty is or will be included in the patent claims. Novelty in an invention is from an obvious addition, and there is a lot of gray area in what is novel versus obvious. A qualified patent attorney can help you understand if your invention or contribution is novel.
One guideline to use in evaluating novelty, however, is that novelty generally comes from the part of the invention that solves a problem that others have experienced for a long time without a solution. Another guideline is that novelty generally solves a problem in a way that gives surprising or unexpected results. Just adding well known new features to a product is not novel even if those features are new to your industry. But modifying existing products to receive extra features where it was not known before how to add those features could be novel.
What Happens if I Include an Extra Inventor on a Patent Application?
Often, when a company develops a new product, it is difficult to unwind contributed novelty and who contributed obvious additions. For example, when Orville and Wilbur Wright developed the novelty of including ailerons to help control the plane’s flight, that justified them being identified as inventors – with a unique and unexpected advantage that is the core of the invention’s success. If Joe suggests that a plane would be cool if it was painted red or if part of the plane were bigger to carry more people, or should use a particular brand of tires or that it should include a cup holder, unless those additions give the invention some unexpected advantage, it is not novelty or inventorship.
However, in the end, if during a brainstorming session or during product development, ideas fly around and it is unclear who invented the novelties, it is better to include more people as inventors than to exclude them. If there is a belief that someone contributes to the invention novelty, there is no legal harm in including them on the patent if ownership precautions are taken. The Patent Office does not require any proof of inventorship to be listed on a patent except that the inventors or Applicant together agree on who is an inventor. Just realize that unless the added inventor assigns their patent rights to someone else, they will own part of the patent.
It is Important to get an Assignment from Every Inventor
Because every inventor gets ownership in the patent just by being an inventor, it is critical that part of your patent strategy includes how to handle the owner rights to build value together. Usually, this is handled by the inventor rights being assigned to a company. The company can be owned by the inventors or by their employer. For employees of a company who are hired as part of their work to help invent, the law requires assignment of their inventions to the company. But this is not always a requirement, and the law may change. To avoid future inventor and ownership claims issues, it is important to get an Assignment of each invention from every inventor to the company even if they are an employee.
It is also important to have employment agreements that make it clear that each employee is required to assign to the company all inventions that they invent related to the company’s business while they are working for the company. A good employment agreement, and specifically one relating to inventions, will avoid future ownership claims on inventions. A qualified attorney can help you develop a standard employment agreement that protects your company’s rights to inventions.
Intellectual Property rights are a large portion of the value of a company, and for many companies, patents are critical to protecting their business markets and giving them a significant market advantage. Please contact a qualified professional at Booth Udall Fuller, PLC with any questions you may have about strategies for establishing and protecting your market monopoly through patents, inventor assignments, and any other intellectual property protection or strategy needs.