The word "inventorship" is a word of art, making an exact definition somewhat difficult. Put simply, inventorship describes the quality of a person who invents or discovers any "new and useful process, machine, manufacture, or composition of matter," or any new and useful improvement of any of the following.
Why Is Inventorship Important?
Inventorship is important because, unless the inventor assigns his rights to another person, only the actual inventor can apply for the patent. So, when you file for a patent, you have to be sure that you know who holds inventorship in the invention.
Who Holds Inventorship?
Although this question seems straightforward, it becomes quite complicated in the context of an employer-employee relationship. Usually, an employee holds inventorship in the invention as long as the employee conceived of it and reduced it to practice on his own time. However, there are certain exceptions to this rule:
- Express agreements - This occurs where the employee signs an express agreement that to assign all rights to inventions created by the employee in the course of their employment to the employer.
- Implied agreements - Even if there was no written agreement, an employer may own the rights to the invention if the employee was hired to invent the product or process, or to solve the problem.
- Shop rights - even if the employee owns the rights to the invention, the employer may have a limited "shop right," meaning that they have the right to use the invention without the consent or payment of the employee. Shop rights usually come up when an employee uses an employer's resources to develop the invention.
Can There Be More than One Inventor?
Patent law does allow for more than one person to apply for the same patent. In fact, if more than one person contributes to the invention, patent law requires that each person be named in the application. However, joint inventorship requires both contribution and collaboration:
- Contribution - Each person must have contributed in some way to the conception or reduction to practice of an invention. It is not enough to simply supply resources or explain an existing concept. Each person must make a contribution that is inventive.
- Collaboration - Each person must be aware of the others' contributions and must have intended to work together to create the invention.
Each inventor does not have to contribute the same amount or make his contribution at the same time. As one can imagine, this can cause conflicts among inventors, which may be alleviated by defining the invention with precision. Thus, as long as there is contribution and collaboration, each person is a joint inventor and has the right to exercise all of the patent rights.
Do I Need a Patent Attorney?
If you have a question about inventorship and how it pertains to the patent application process, you should consider contacting a patent attorney. An experienced lawyer can explain the complicated patent system to you and can help you to protect your rights.