There’s a great deal of misconception surrounding the topic of intellectual property when it comes to the invention of new products and designs. Many entrepreneurs and even some seasoned professionals may overlook contributions made by others and will exclude them, both accidentally or intentionally, from inventor credits. At the end of the day, it’s not a matter of whether the foundational claims and patent embodiments arose from the efforts of one individual, many or a commercial entity but rather, a matter of how the U.S. Patent and Trademark Office views the conditions of inventorship. Let’s look at some key terms in order to better understand this.
What can be claimed?
The tests of whether something qualifies for protection under USPTO guidelines are simply this:
- Uniqueness – The claims provide some unique method or means by which to solve a problem, or to create something novel and purposeful, or to add value and improvement upon something already known.
- Non-Obvious – Essentially nobody has previously conceived of the claims, documented or filed such, or has never rendered such claims to demonstrably public or private use within the period of a year.
Who gets credit?
Naturally everyone wants their 15 minutes of fame and in this environment of “Serial Entrepreneurs”, the notion of instant success has everyone scrambling for visibility as the race to the top of the digital heap rages on. Unfortunately, for both the face men AND the individuals who are tasked to perform the work of rendering claims to demonstrable use, things are seldom done fully above board with respect to the handling of intellectual property. This can create problems for the businesses who are looking to capitalize on and make eventual use of this IP. So to answer the question as to who gets the credit . . it’s anyone who contributed anything unique and non-obvious.
I hired a product designer, why should they be listed as inventors?
Inventor and patent credits have very little or nothing to do with whether you’ve hired or paid a product design group or individual to develop your invention or product ideas. What seems to confuse people most is where the line is drawn regarding who created what. If you propose a generalized concept, there may be areas which require further development and problem solving in order to fully reduce your idea to practice. If a service provider develops an embodiment as a solution to an unsolved area of your original IP, then they are entitled to inventor credits.
The other thing that seems to snag people is that the sharing of inventor credits is not automatically a granting of rights for all named inventors. This is simply a matter of defining the terms of ownership prior to any development work. The right of use is commonly assigned when an application is filed subsequent to development work done under some form of contractual service agreement. A formal assignment document may be filed alongside the application which ensures that any claims included in the application and that were contributed by a service provider or non-partner under a scope of development work, become the ownership of the hiring or paying party. Regardless of how the ownership is handled, it’s important to understand that naming contributors and ultimate co-inventors isn’t optional, it’s a USPTO requirement.
Conclusion
In summary, we want to emphasize the significance of naming all known inventors on an application because there can be a considerable downside risk to not doing so. One might think that it’s no big deal, who’s gonna know? but the intentional exclusion of a known inventor from an application constitutes the act of something called “deceptive intent”. The laws are designed to protect all of us and an inventor exclusion can ultimately lead to the invalidation of a patent which obviously benefits no one.
To learn more about how intellectual property matters can impact your product design and commercialization strategies, feel free to call or write Seattle Product Design today and we’ll help you to sort it all out.
