Who's names get assigned to a patent

[MDGroup]

Which people involved on a design project should have their names included on any patents that get issued?

Assume you have 3 people working at the same company to develop a new product.

Person A has a novel ideal for a product. Everything is very conceptual and general.

Person B takes this idea and turns it into a functional product. Developing the components, electronics, and system to take it from a concept to an actual working unit.

Person C is involved with the entire project on minor tasks. Designing components, assembling and testing the prototypes, working out assembly issues so the product can be reliably built.

So, whose name goes on the patent. Just person A because it was their idea and that is what the patent is mainly for. Should it include person B because they took the concept into reality. Wihtout person B's knowledge/expertise, it would still only be an idea. Or all 3, in the end person C is still very valuable in testing the idea and putting it together into a marketable product.

What are your thoughts?

(I'm in the US, but open to ideas form everywhere)

 

[TheTick]

Inventorship is not restricted to a single name. Anyone who contributed to the novel ideas protected in the patent should be listed.

 

[looslib]

Since most companies take the patent in their name anyway, I could see all 3 names on the patent with rights assigned to the company they work for.


"Wildfires are dangerous, hard to control, and economically catastrophic."

Ben Loosli

 

[MDGroup]

Thanks for the input.
Agreeing with looslib that the company retains rights and ownership of the patent, is there any reason that the company would not issue everyone's name on the patent?

I think it would be more in the companies best interest to acknowledge additional people. Just in case person B leaves sometime in the future, he might take his ideas with him. Then it may get messy if their was any litigation and it is determined that person B should have been on the initial patent, but was omitted.

 

[plasgears]

I had the routine of naming a maximum of co-inventors: the boss who gave the gen'l concept, the drafter who fleshed out the finer details, and me. It maximizes the mutual respect for fellow contributors and spreads the wealth around. In that company all co-inventors got equal cash awards and recognition.

 

[MDGroup]

What if we change the conditions slightly:

Suppose Person A contracts Person B to develop their idea.

So, Person A has a novel idea and decides he wants to hire someone to develop the conept into a product. He contacts Person B and agrees to pay him $X to design the product. Again person B uses his knowledge/experience to overcome obstacles that person A would not be able to resolve.

Do we still issue the patent to all involved, or is this different since the idea was contracted out? (Assuming no mention of any patent ownership was included in their contract)

 

[MacGyverS2000]

TheTick has it:

Anyone who contributed to the novel ideas protected in the patent should be listed.

Even if MDGroup's contractor 'B' came up with some novel idea that is later mentioned in the patent, it will be up to your contract agreement with 'B' as to whether or not they are included. If they are hired to "solve problem X" and the contract stipulates you own all rights to whatever they come up with, the new ideas can be included in the patent and 'B' is not mentioned on it. If the contract states 'B' retains all rights to whatever ideas he uses to solve the problem, then there is the potential for a new patent to be filed by him as an improvement on an existing idea, leading to him winning the race.

Dan - Owner

http://www.Hi-TecDesigns.com

 

[jmw]

In the UK the 1977 Patents act says the inventor's are entitled to be named as the inventors, not the company.

JMW

http://www.ViscoAnalyser.com

 

[TheTick]

Inventorship is statutory. One could not nor should not agree to have one's name withheld if one qualifies as inventor. Also, the party prosecuting the patent MUST list ALL inventors (=those who contributed novel ideas).

One company I worked for took it a step further. They had a bonus for inventors listed on new patents. That bonus was the same for all inventors, not a single sum split many ways. They saw the need to ensure all inventors were duly noted, and took the time to see who rightfully qualified.

 

[MintJulep]

A gracious person A would say include B and C.

A gracious person C would decline to be listed.

I am not gracious, but I think B is deserving of being listed.

 

[patprimmer]

For an inventor to be fairly included their contribution should be an essential part needed to pass the innovation test. Anyone else is getting a free ride. Company politics may determine that a free ride for someone is in the companies best interest. The inventor may feel that the goodwill generated by giving someone a free ride is worthwhile.



Regards
Pat
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[IRstuff]

There's really no practical limit. The last patent I was on had the engineering manager's name, the program manager's name, the business development manager's name, and oh yeah, the actual inventors' names.

In 99% of the time, since the patent is assigned to the company that paid the salaries of the listed inventors, the name list is mostly for bragging rights, so there's no real reason to be sting about crediting even someone who might have only been peripherally involved.

As for contractors, that simply means that the A owns the patent, but there's not necessarily any reason to not have B on the list of inventors if B materially contributed to the invention.

TTFN

FAQ731-376

 

[Comcokid]

From everthing you've indicated, persons A and B deserve to be listed as inventors on the patent. One came up with the idea, and the other refined the idea to be practical. Person A would be listed first since he is the primary patent inventor (and a symposis of the patent would indicate "Person A, et al"). Person C would not be included unless there was some tangable item that he contributed that eventually shows in the wording or diagrams of the patent.

I have heard that listing additional people as inventors in a patent who were not importantly involved as inventors can weaken the legal defense of the patent should it ever arise.

 

[moltenmetal]

I'd say A and B definitely, regardless of who they work for and which company will own the rights. As to C, you have to cut these things off somewhere: some would recognize C and D and E and just about everyone who touched the thing before the patent was granted, just to be sure everybody feels that their contribution is recognized, while others draw the line further up the intellectual contribution food chain.

We contract in the area of technology development, with contracts which stipulate that the owner (i.e. our client) owns the IP at the end of the work. We do not compete with our own clients and hence don't want royalties from licensing agreeements etc. as these muddy the waters, so the IP is of no real value to us anyway.

Wise owners mention us as co-inventors on their patents related to our work, even though they own the IP and all associated rights. Their lawyers know that we can screw things up later if we insist on having our inventorship recognized. Recognizing our role in the invention costs them absolutely nothing and avoids problems later. Being recognized as co-inventors is of value to us professionally and from a marketing perspective for our company.

 

[IRstuff]

Strictly speaking, C is not a party to the patent. Since "reduction to practice" is not required for patentability, the producibility is not germane to the patent, unless you can add a claim of how to make it based on C's contributions.

TTFN

FAQ731-376

 

[mbt22]

An excellent suggestion I've seen somewhere is to look at the claims. If someone can point out a claim as being their idea, then they are an inventor for that patent.

If you are only claiming the concept, B is not an inventor because he did not invent what you have claimed. If B can point to something in a claim that he contributed rather than A, he is an inventor.

As always, I am not a patent attorney.

Matt

 

[BrunoPuntzJones]

While I pretty much agree that the way it described above is how the selection of inventors is practived, the actual legal framework (in the US) is a bit different from what is done in practice.

Now I'm not a lawyer, but I work with patent law regularly. The way the Patent Office describes who should be listed as an inventor on a patent is if they are responsible for originating any one of the claims in the patent (patents can have one, a few, or dozens of claims). According to the USPTO, no one else in your orginal situation would qualify as an inventor (unless something B does in designing the system results in a specific claim that would not otherwise have been made).

Of course in practice this can be alienating to B and C, both of whom clearly contributed to the project, and so companies will tend to err on the side of too many inventors rather than too few.

 

[BrunoPuntzJones]

mbt22

You beat me to the punch.

 

[msquared48]

MDGroup:

However you write the patent, make sure you use the correct english terms and words. Proofread it many times. To do otherwise can lead to legal misinterpretations and court time.

Not to be supercritical here, but "who's" is short for "who is", where obviously you meant to use "whose" in the subject line.

You have to be precise, or it will be open to compromise.



Mike McCann
MMC Engineering
Motto: KISS
Motivation: Don't ask

 

[IRstuff]

There are also some general rules that need to be adhered to, based on a recent one I just read, which was just AWFUL:

> The abstract and description should clearly explain why the invention is an improvement over the prior art. The abstract I read simply enumerated the parts of the invention, as if that was enough.

> The drawings of prior art should have a similar form to those of the invention, so that comparisons can be clearly made. The one I read had a picture of prior art that didn't compare with the invention, nor did they compare with the art in the prior inventions. Clear lineage from prior art drawings make it easier for the examiner to see the differences, and the writeup should clearly explain why the differences are important and better.

> The claims should have a similar structure to prior inventions, so that improvements are clearly exhibited and explained. The one I read had 9 claims to describe just the basic invention, while the prior art had a single claim that described the invention. The examiner got so confused by the tortuous claim structure that he disallowed the one part of the structure that was the raison d'etre for the invention itself, and pulled some completely unrelated prior art as rebuttal.

> The description of the invention should clearly describe what the prior art is, and what the invention is trying to do. It was clear that the examiner had absolutely no idea what the invention was supposed to be doing and why.

TTFN

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