When Contributions Lead to Joint Inventorship

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When does someone else’s contribution create joint inventorship? Here are some scenarios.

Ideas and suggestions from others

Remember, a person must contribute to the conception of at least one important or necessary element of the invention to be a joint inventor and owner—for example, contribute to the conception of the physical structure of the invention or its operative steps. Following directions or providing ideas and suggestions is not enough to be a joint inventor unless they amount to the conception of at least part of the claimed invention. For example, suggesting a problem to be solved is not enough to be a joint inventor; a joint inventor must help provide the solution to the problem.

EXAMPLE: Famed inventor Edwin Land went to the beach with his family in 1943. He took a picture of his three-year old daughter with a standard camera for the era—one that required that the film be sent to a photo lab for developing. His daughter asked him why she had to wait to see the finished photo. Land’s daughter posed a problem—why can’t pictures be developed right away? In 1947, Land patented the first instant camera. He eventually obtained many patents for instant photography and marketed his cameras and film through a company he previously founded: the Polaroid Corporation. Land’s daughter was not a co-inventor of instant photography. All she did was pose a problem—why can’t you see a photograph right away? It was Land who found the solution.

Reduction to practice

Reducing an invention to practice—that is, building and testing a prototype or applying for a patent—does not by itself make a person a joint inventor.

EXAMPLE: Thomas Edison didn’t build his phonograph invention himself. Instead, he gave a drawing he created of the first phonograph to a machinist in his employ named John Kruesi to build. Kruesi followed the drawing and constructed the phonograph. This did not make him a joint inventor of the phonograph with Edison.

On the other hand, if a prototype builder comes up with valuable contributions and at least one of these contributions finds its way into a patent claim, both people would be joint inventors and should be named as such on the patent application. For this reason, it’s wise to keep as much control as you can over the building and testing of your invention.

Team efforts

Special difficulties can arise where creating an invention is a team effort, where each member of the team has contributed something. To determine ownership, it is necessary to separate those team members who actually contributed to the conception of the invention from those members that merely acted under the direction and supervision of the conceivers. Only the former are joint inventors and owners.

EXAMPLE: Again, Thomas Edison provides a good example. Most of his greatest inventions were team efforts. For example, many people helped Edison design, build and test the light bulb. One of these helpers was chemist Otto Moses who, at Edison’s request, performed a systematic study of the scientific literature on carbon substances. This research helped Edison find the best filament for his light bulb, which turned out to be bamboo. Nevertheless, Moses was not a joint inventor of the light bulb because he did not contribute to the invention’s conception.

Avoiding Involuntary Joint Inventorship/Ownership

Fortunately, it’s relatively easy to avoid the whole problem of claims of joint ownership by contractors, assistants and others who perform tasks for you. Have those who help you sign an agreement assigning any rights they may have in the invention to you. Had Dr. Yoon (in the example at the beginning of this section) done this with Choi, Choi’s claim that he was a joint owner would not have been successful.

You need to obtain an assignment before you get another person to help you with your invention. You especially need to use such assignments with any employees and independent contractors you hire. But you should also obtain assignments from other who provide guidance, ideas, suggestions and other help; this includes colleagues, friends and experts you consult with. You should develop assignment agreements (which should also contain confidentiality provisions) ahead of time to use with such people. You can find sample agreements to use with employees and independent contractors in Chapter 10. Agreements to use with others can be found on the disk at the back of this book.

If you are unable or unwilling to obtain an assignment, all is not lost. If someone falsely claims to be a joint inventor, you’ll be able to disprove these claims by keeping good records—principally an inventor’s notebook (See Chapter 9). Also, document your third-party contacts—for example, keep copies of correspondence and e-mails. If you have an invention conversation with someone, write a memo summarizing what was said and paste it into your inventor’s notebook (or keep it in a separate file). If your invention is successful, you may be surprised at how many people, including friends and colleagues, claim they contributed.

What if someone conceives part of your invention and you don’t have an assignment agreement? In this event, you have three options:

  • share ownership with the other person, in which case you should sign a joint ownership agreement,
  • acquire the other person’s ownership interest through an assignment or
  • if possible, don’t claim those elements of the invention contributed by others—this way, you’ll be sole owner of the patent. Seek help from a patent attorney if you’re considering this option.

Portions of this article are derived from What Every Inventor Needs to Know About Business & Taxes by Attorney Stephen Fishman.

For more information:

Preventing Joint Inventorship

Voluntary and Involuntary Joint Invention and Ownership

Purchase Joint Ownership Agreement with Explanations

For assistance with the preparation and filing of a provisional patent application, see Nolo’s Online Provisional Patent Application.

 

 

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