Who controls a Patent? Inventor? Company?
35 United States Code (U.S.C.) 101 reads as follows:
“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore . . . ” and this is the starting point for determining ownership of Patent Assets.
Last month’s blog included illustrations of how a company can lose control of its Patent Assets. This month we will explore steps you can take to retain control of your company’s patents.
Control of Patent Assets
Whenever possible, companies should limit the possibility that statutes and case law will determine the ownership of Patent Assets and other Intellectual Properties. To blindly believe that because the company paid someone to do something for the company, the company owns what was created is not always effective. It’s similar to people assuming that when they die without any estate planning, State law will distribute their property according to their wishes. It seldom works that way.
How to Better Control Company Patent Assets
Use contracts with employees, agents, and independent contractors to ensure the company’s ownership of the invention’s Intellectual Property rights. Some conditions for control of Intellectual Property rights can include:
1. As a condition of employment, the employee agrees, in writing, that the company is the owner of:
- all inventions invented by the employee; or
- the inventions invented by the employee at any workplace provided by the company or with devices, tools, programs, etc. supplied by the company; or
- the inventions invented by the employee that are associated with the company’s goods or services or the company’s pipeline of goods or services.
2. As a condition of employment, the employee gives the right of first refusal (in writing) to the company as to whether the company will own the invention.
3. Prior to hiring an agent or independent contractor, the company requires that agent/independent contractor to sign a written agreement stating that:
- all the inventions invented by the agent/independent contractor at any workplace provided by the company or with devices, tools, programs, etc. supplied by the company are owned by the company; and/or
- all inventions invented by the agent/independent contractor associated with the company’s goods or services or the company’s pipeline of goods or services belong to the company.
Control Your Company’s Patent Assets or Someone Else Will
An assignment document is used to transfer ownership of the invention’s intellectual property rights to the company.
If the employee will not agree to assign Patent Assets to the company as a condition of employment, hire someone who will.
The same approach should be applied to agents and/or independent contractors.
If you have questions about your company’s ownership of Patent assets, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.
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