By Ronald J. Riley
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promoters, agents, and product developers are asking for
a piece of inventions, sometimes just joint ownership,
and less often to be named coinventors. I agree that
partnerships between marketing people and inventors can
be good for both. But such partnerships are much
like being married, except that making up is not anywhere
near as much fun.
companies who start out buying your invention will at
some point try to con the inventor into naming one of
their staff a coinventor. It is not wise to ever allow
staff of a licensee to become coinventors. Generally once
they get coinventor status they will use such to avoid
paying the real inventor a dime.
It is very
important that legally binding agreements specify exactly
what the duties are and compensation is for each
coinventor. Any other approach is an invitation for
disaster, and in my experience it is the inventor who is
had in situations where there are no suitable contracts
in place. There is little I or anyone else can do
to help them after the fact.
I am confident
that the marketing people, the wheelers and dealers, can
protect their interests - I consider it my duty to tell
the less savvy inventors what the pitfalls are. If
they chose to ignore the advice than that is their
In most cases it
is not wise to make any invention promoter a partner. For
an example of an invention promoter who has raised the
hackles of many experienced inventor advocates see www.InventorEd.org/caution/agentandy/. Agent Andy argued beligerently that he
should have free reign to to use information a client
discloses in confidence as he sees fit.
Even more interesting was the
fact that Tom Kruer vigorously defended Agent Andy's
conduct. Kruer is a product developer who holds several
patents, many of which have coinventors. Kruer has
repeatedly claimed that he is an inventor ??? and not
selling services to inventors but he also has commented
on having clients and selling his services to develop
products. I also have reports that he tells inventors who
come to him for help that he will be a coinventor. That
is most certainly better than the way Agent Andy
operates. Still, a reasonable person can not help but
wonder if Kruer really invents himself or if he just
talks client inventors who come to him for design
services into listing him as a coinventor.
In any event both
Kruer's and Agent Andy's failure to understand the
ethical problems with the way Agent Andy operates is
deeply troubling. One good thing that comes from this is
that their conduct serves as a poignant reminder that
inventors must constantly be on guard when dealing with
inventors are not qualified to know if a service provider
is really a coinventor or just supplying engineering
services which do not qualify as inventing. But if
several people go to a patent practitioner and say they
are coinventors the person drafting the patent is likely
to just take their word for this (they are not going
to go out of their way to alienate any of the clients).
What does an
inventor do to protect themselves from this problem? First, do not do
business with any service provider who has not signed a
contract assigning all patent rights to you and do not
disclose an unpatented invention to any party who has not
signed a Non Disclosure Agreement (NDA). See http://www.inventored.org/forms/.
Second, hire a
patent practitioner who does not have a relationship with
any of your service providers. DO NOT hire a patent
practitioner whom a service provider has an existing
relationship. Present the service providers contributions
to the patent practitioner and ask their opinion about
rather or not the service provider has really contributed
to the "invention" or simply provided non
invention support services. It is best for an inventor to
not have coinventors unless those people really did
invent. But some service providers egos, or worse their
desire to scam the real inventor, drive them to try to
get coinventor status when such is not justified.
invention is your baby, and the last thing you need is a
messy custody battle. Why share custody when you may not
A serious problem
with co-inventorship deals is that in the absence of a
contract that any party listed as inventor on a patent
can enter into an agreement with a third party to license
the patent without approval of the coinventor(s).
So when you make someone a coinventor you are giving them
rights to do whatever they want with the invention!
You need to
execute an agreement, one that is fair to all parties,
which does not allow anyone to dispose of the joint
invention without the express approval of all the
co-inventors. The agreement must mandate that the funds
from such a sale be escrowed by an attorney and said
attorney distribute the shares to the appropriate
parties. I.E., this protects all the parties from one
person selling rights to the patent and keeping all the
money. Leaving any other inventors with an (likely
losing) uphill battle to get their share. See David
for a Joint Owners Agreement.
In other words, if
an inventor is induced to make someone a co-inventor then
they have effectively signed away their exclusive
rights. Any listed inventor may sell the patent
rights. Now, would anyone care to guess who would
prevail in the race to market, the inventor - or the
marketing person / corporate interest? History is replete
with examples of inventors who are shafted while their
business partners go on to make fortunes.
that bankrupcy or the death of a co-inventor can lead to
the property being transfered to a new party. This is
much like a shootgun wedding.
interested in the specific CAFC decision in regards to
this issue see: http://www.ipo.org/YOON.html. A reminder that IPO members are
behind so called "patent reform", legislation
which is very detrimental to independent inventors
Mr. Bergquist <DBergquist@aol.com> supplied the following reference on
the Patent-L forum in response to my query.
July 28, 1999 2:18 PM
Subject: Re: Joint inventors
From the MPEP:
CHAPTER 26 - OWNERSHIP AND ASSIGNMENT
261 Ownership; assignment.
262 Joint owners.
261 Ownership; assignment.
Subject to the provisions of this title, patents shall
have the attributes of personal property.
Applications for patent, patents, or any interest
therein, shall be assignable in law by an
instrument in writing. The applicant, patentee, or his
assigns or legal representatives may in like manner
grant and convey an exclusive right under his
application for patent, or patents, to the whole or any
specified part of the United States.
A certificate of acknowledgment under the hand and
official seal of a person authorized to administer
oaths within the United States, or, in a foreign
country, of a diplomatic or consular officer of the
United States or an officer authorized to
administer oaths whose authority is proved by a
certificate of a diplomatic or consular officer of
the United States, or apostille of an official
designated by a foreign country which, by treaty or
convention, accords like effect to apostilles of
designated officials in the United States, shall be
prima facie evidence of the execution of an assignment,
grant, or conveyance of a patent or application for
An assignment, grant, or conveyance shall be void as
against any subsequent purchaser or mortgagee for a
valuable consideration, without notice, unless it
is recorded in the Patent and Trademark Office within
three months from its date or prior to the date of
such subsequent purchase or mortgage.
(Amended Jan. 2,
1975, Public Law 93-596, sec. 1, 88 Stat. 1949;
Aug. 27, 1982, Public Law 97-247, sec. 14(b), 96
262 Joint owners.
In the absence of any agreement to the contrary, each of
the joint owners of a patent may make, use, offer
to sell, or sell the patented invention within the
United States, or import the patented invention into the
United States, without the consent of and without
accounting to the other owners.
(Amended Dec. 8, 1994, Public Law 103-465 sec. 533, 108
Stat. 4809, effective Jan. 1, 1996.)
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