Patent Rights of Joint Inventors

Transcript

you and your girlfriend decide to get a dog and one thing leads to another and you invent a dog leash for your dog you file a patent application and you get a patent but life happens and you end up breaking up with your girlfriend and then comes the age-old legal questions who gets the dog and more importantly who gets the invention owning dogs can be complicated and owning patents with joint inventors can also be complicated in this video i want to talk about the rights of joint inventors stay to the end because i have some ideas and some tips on working with joint inventors hi my name is john farrell i'm a silicon valley patent attorney welcome back to my channel if you buy an apartment with someone if you're joined owners in a piece of real property there's something called a duty to account you're required to share the rents with your co-owners the same thing happens with copyrights if you write a song with someone no matter how little they contribute to the song royalties of the song royalties of the copyrighted work are shared among the co-authors of the work but patents are different when there are joint inventors on a patent each patent owner has a hundred percent interest in the patent that is to say they can license the patent independently they can sell their share of the patent they can practice the invention that's described in the patent without permission from the other inventors and there's no duty to account to the others there's no requirement to pay licensing fees for example to the other inventors on the patent now one of the big drawbacks of having multiple inventors on a single patent is that when you sue on the patent when you sue for infringement of the patent all the inventors have to be joined as parties to the lawsuit now the reason for this is that we don't want to subject the defendant to multiple serial lawsuits on the same infringement so when a patent infringement suit is brought against a defendant all of the parties that patent all of the co-inventors on that patent must be present for the lawsuit must be party to the lawsuit okay so this is a problem because there may be co-inventors who don't want to join the lawsuit in fact just the opposite they may decide to grant a license to the infringer sell a license to the infringer and keep the money so just keep in mind that if you're going to enforce your patent you need to have the other inventors cooperating with you on the lawsuit now what if you want to leave one of the inventors off of the patent that is you decide that ah this guy left the company or he's not working with me anymore i'm not getting along with him i'm just going to leave his name off the patent does that create a problem and the answer is yes in order for the patent to be enforceable you have to name all true inventors on the patent now here's a tip if one of your inventors leaves or you're not getting along or you split up and you go in different directions it's possible just to leave claims that he contributed out of the patent application that is to say when you list and identify the various parts of the invention just leave out and leave out of the claims that part of the invention that was contributed by your co-inventor and then you can leave the co-inventor's name off of the patent but one of the things that we can't do is just leave the names of our co-inventors off and include their contribution in the patent claims an example of this is you might be filing a patent on a bicycle and you and your co-inventor put together a design for a bicycle and you're really responsible for the design of most of the bicycle and the contribution that your co-inventor contributed was streamers handlebar streamers that come off of the hand grips of the bicycle well one of the ways that you can avoid naming your co-inventor on the patent on the bicycle patent is just to leave the claims off of the patent that relate to the streamers now you can include description of the streamers inside the specification inside the detailed description of the invention but you just can't include the handlebar streamers as part of the patent claims at the end of the patent okay we've talked about some of the problems that arise when there's joint inventors and maybe it makes sense to try and keep joint inventors off of your patent but sometimes the problem arises where you just have to have joint inventors that is you accidentally invent together and this often arises when there's two companies that are working together on a joint project or two companies are working together maybe there's a vendor and a supplier or a manufacturer and designer the companies are working together on a project and there's an invention that comes out of their cooperation their collaboration that's patentable and they want to file a patent if there's no joint venturing agreement between the parties before making the invention then before filing the patent application it would be really useful to draft a cooperation agreement an understanding of what's going to happen with the patent who's going to pay for the patent and who's going to maintain the patent and what happens with respect to income from the patent who can enforce the patent is there an agreement to the parties working together during a patent infringement action and it's very helpful to have this cooperation agreement in place before actually filing the patent application now what about the situation where you have a startup and you have two or more co-founders that get together they work on some technology they come up with an invention and they file a patent application on the invention and then time passes and then they split up one of the founders goes a separate way who gets the who gets the patent rights well this is a real problem this happens a lot in startups so it's important if you're starting a company and you have co-founders incorporate the company first and then when you file your patent application each of the co-inventors should assign that patent application into the company so that if one of the co-founders leaves the benefits of that patent will stay with the company itself if you'd like a sample copy of a patent assignment form click on the link in the comment section below and i'll send you an exemplary copy of the patent assignment form i use in my practice now the rights that we've been discussing so far with respect to joint inventors are those rights for patents in the united states but the laws vary from country to country as to how joint inventors get treated with respect to patents for example in the united states there's a no duty to account among co-inventors if you receive a licensing fee there's no obligation to share that fee with others of your co-inventors but it may be different in china for example with some patents with some inventions there may be a duty to share a duty to account so you want to check with your patent attorney when filing foreign patents when joint inventors are involved okay that's really all i have to say today about patents and joint inventorship if you have any comments or questions about joint inventorship put them in the comments section below i'd love to hear from you thank you so much for joining me on this video see you next time [Music]