If you are an engineer or scientist, you are (hopefully) no stranger to filing patents. A patent is key to monetizing and protecting your company’s intellectual property and the sole right to produce and distribute products that utilize your patented technology or design.
However, inventions are often developed in the company of or with the influence of others. After all, collaboration can be an immensely positive force that yields more innovative and extraordinary products. When such a work is created, and it’s time to file the patent – how should you go about it? What if the various contributors to your invention were involved to varying degrees, or across different times and locations? Thankfully, there are streamlined ways to cut through the uncertainty. The team at Patterson Thuente IP shares some patent wisdom.
File Jointly
Just as when filing a copyright, the U.S. Patent and Trademark Office allows for a co-filing of a patent by multiple contributors, also known as Joint Inventorship. Even if the inventors are separated by time, distance, or scope of work, as long as there has been some level of communication or collaboration, they are permitted to co-file. The process of filing a patent is relatively straightforward, and can be done easily with the help of a qualified patent attorney.
It’s important to note that the patent filing doesn’t take into account the various contributions themselves; from the language of the Patent Office: “While each joint inventor must generally contribute to the conception of the invention, each joint inventor does not have to ‘make the same type or amount of contribution’ to the invention.”
This just means that unlike the ownership of copyrights, percentages of ownership are not established within the filing of the patent itself. As far as the USPTO is concerned, all contributors share equally in the ownership of the patent. Creators should note that it is standard practice to include any and all contributors on the patent filing.
Post-Filing Arrangements
If this ownership structure is less than ideal based on the nature of your work, or the very minor contribution of one creator, it’s possible to address this issue after the fact. The value of a patent often shows itself when a company or developer wishes to use the patented technology in their products. For this use, the company may pay the patent holder an upfront fee plus back-end royalties for each product sold.
With the help of a lawyer, the various co-filers of a patent can draw up a contract that governs the distribution of fees and royalties to the owners of the patent in varying percentages. This can help account for the discrepancies in contribution level while still allowing all of the contributors to share in the ownership of the patent.
Work with a Patent Attorney
Whether the filing itself or the negotiation of fees paid for their use, the intricacies of patent law should not be pursued alone. Not only can a patent attorney help ensure your works are properly protected and pursue any infringements, but they can help license your patent to interested parties and help you earn more for your ideas.
Patent lawyers can perform a comprehensive portfolio review, a competitive landscape comparison, and other due diligence tasks that you as the creator should not spend your time worrying about. Let an intellectual property expert help you develop a strategy that protects your creativity, your ideas, and the financial future of those ideas.
Protect Your IP Today
Connect with experienced IP lawyers today to learn about protecting your intellectual property, as well as gain industry insights and professional recommendations. Our team of experienced attorneys stands ready to help you with your unique situation. Contact us today: https://patterson20stg.wpengine.com/wp-contentwww.ptslaw.com/contact/.