4 key questions to ask on patent ownership
Anne Marie Carr, Jamie Ingram
It’s crucial to know the ownership and inventorship of patent rights. Why? Because getting it wrong can lead to a loss of your rights, cause disputes and scare off potential partners.
Here are the 4 key questions you should be addressing on patent ownership:
What is the “inventive concept” of the invention?
What new concept is key to solving the problem your invention solves? What effect does this have, and how is this different from previous solutions?
Who contributed to the “inventive concept”?
Objectively, whose idea was the inventive concept? For avoidance of doubt, if an individual had material input to the inventive concept, then they should be named as an inventor.
How did the patent applicant get entitlement to the invention?
In the UK and Ireland, the owner of an invention is usually the inventor (for other countries, contact us for information). However, rights transfer to the inventor’s employer if the invention was made by the inventor in the normal course of their employment.
It’s crucial to be able to demonstrate that the rights to the invention were properly transferred from the inventor to the patent applicant.
Is there more than one patent applicant?
Inventions forged from collaborations or startups can have several applicants. Business relationships can occasionally break down, making joint ownership problematic and contentious.
Transferring the patent rights to a company as a sole applicant can simplify things considerably. For international collaborations, obtaining the relevant foreign filing authorisations prior to filing the initial application is a necessity.
We can help
For further advice on patent ownership and inventorship, contact Anne Marie Carr, Jamie Ingram or your regular Murgitroyd attorney.