Listing all Co-Inventors

Fed. Circ. Axes Dog Aid Patent That Omitted Inventor’s Vet

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By Ryan Davis    

USPTO (United States Patent and Trademark Office) has always required that all inventors are listed on a patent application, even if they provide only a small part of the invention.  If you don’t take steps to clarify the ownership position of each inventor, the each co-inventor will be considered to have an equal share of the inventions.  The impetus to be sure that co-inventors are properly listed today is greater than ever as in 2013 the patent office has provided additional ways for people to challenge patents.  These ways include post grant review, inter-partes review and ex-parte reexamination. This slide show from the USPTO gives a pretty good explanation of the appeals process.  https://www.uspto.gov/sites/default/files/documents/ICon2017_Appeals-of-Examiners-Decisions-and-Trials.pdf 

I’m not positive what happened in this case, but in similar cases it is possible for a disgruntled co-inventor to challenge your patent, or another interested party, for example a potential competitor, to challenge your patent and invalidate it if co-inventors are not listed.

How to Protect Yourself Financially

Just because you list someone as a co-inventor does not mean that they own a percentage of the invention or entitled to profit from it unless you fail to take any protective steps..  But you are wise to have a co-inventor sign some documents when the application is being prepared that keep you in control of your inventions.

Step 1. Have consultants and engineers sign a contract that turns over you product to you. The fact you paid them alone won’t guarantee the engineers and consultants don’t have a claim on you invention unless you have a signed agreement about IP rights This web site, paragraph 8.5 has a very good IP clause.  https://onestopinventionshop.net/10-steps/   Search for “engineering services agreement IP ownership.” on the Internet to get samples of agreements.

Step 2.  Set up a LLC or company and assign the patent to that company.  You can list percent of ownership of the company in the bylaws or start-up documents and that way you can distribute ownership to the parties at some agreed upon level. This web site should get you started, https://www.thebalancesmb.com/how-to-set-up-a-limited-liability-company-llc-1200859.

Step 3.  Another method you can pursue is just to buy out the other person.  This is common when the co-inventor is a family member or friend who does not want to pursue the idea or invest further. This site has a simple purchase agreement you can use.  https://www.docracy.com/7l057ytbts/simple-asset-purchase-agreement

There are other steps you can take but I feel my far the best onw is form an LLC or Company, where you can then purchase someone’s shares, and can easily state what share of the business, which in this case is the inventions.  One bonus of this is that an LLC spells out the percentage each party needs to make in the future for the invention, which frequently scares small co-inventors to sell their rights to the invention.  Don’t let anyone keep rights to your invention without having a responsibility to pay their fair share in the future.

You should consult with a local attorney before proceeding with these steps to ensure you are meeting the legal requirements in you state.