An incorrect identification of inventors on an issued patent may invalidate the issued patent. In broad, general terms, an inventor has an idea that contributes to a functioning claimed invention. Imagine the following scenario – you talk about your new and not-yet-functioning idea at a neighborhood barbeque. Between bites of chicken and macaroni salad, your neighbor suggests a critical element to the functioning of your invention. When you file a patent application claiming your now-functioning invention, you must identify your neighbor as a co-inventor on your patent application.
You cannot enforce a patent invalidated for incorrect identification of inventors.
You share patent rights with your neighbor, as patent rights initially vest with co-inventors. At the same time, your neighbor may have given up potential market opportunities. Your neighbor had subject matter expertise, which could have been used to support a business venture. Accordingly, sharing intellectual property, even at a neighborhood barbeque, may impact patent rights and business opportunities.
Similar situations exist in the corporate world. I spoke with Brian Picket, Commercial Director, Americas, at CRISTAL (http://www.cristal.com), one of the world’s largest manufacturers of titanium products. Brian is a co-inventor on patents claiming titanium-based inventions. We discussed co-inventing patentable subject matter between companies. Corporate partners may gather to discuss a problem facing an industry. Subject matter experts may offer solutions to the problem. Brian suggested looking at your involvement in the discussions through a sales lens. You may promote features, advantages, and benefits of your products without disclosing the “how” or “why” of your products. You balance your corporate need to maintain your market advantage with co-inventing a novel and useful invention for your industry. Similarly, the neighbor at the barbeque may consider whether giving up a potential market opportunity is worth discussing subject matter expertise with you over corn on the cob.
I also spoke with Chad Schneider, President of Root3 Labs (http://www.root3labs.com/), which engineers devices and develops products for clients. Clients engage Root3 Labs to convert an idea into a marketable product. During concept generation, Root3 Labs engineers may identify novel functions and features comprising patentable subject matter. As a matter of course, Root3 Labs’ clients own patent rights for any resulting patented inventions. As a patent application is filed, Root3 Labs engineers are listed as co-inventors. However, they complete a declaration and assignment that assigns all rights to the client. Has anyone ever seen assignment documents passed around for signature while a dessert tray is passed around at a neighborhood barbeque? No. You may consider whether brainstorming with neighbors is worth sharing patent rights with those neighbors.
Whether in a backyard with neighbors or in a conference room with industry experts, we cannot predict whether a discussion will yield a novel invention. The law requires proper identification of co-inventors on an issued patent, so sensitivity to patent rights and potential market opportunities is warranted.
I want to thank Brian Pickett of CRISTAL and Chad Schneider of Root3 Labs for discussing their experiences with co-inventing and patent rights with me. To learn more about CRISTAL and their work at the Baltimore Administrative and Technical Center, please visit http://www.cristal.com. To learn more about Root3 Labs and their device prototyping and product development, please visit http://www.root3labs.com/.
Hutchison Law, LLC has experience helping clients identify co-inventors in a patent application. To learn more about how we prepare and file patent applications, please contact us at 410-978-7287 or firstname.lastname@example.org.
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