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Best Practice: Name All Inventors on Your Patent

When a process or product becomes successful, correctly naming all the inventors that were involved on the patent is essential to avoid having any contributors feel like they’ve been wronged or excluded.

Failure to properly name all the correct inventors when drafting a U.S. patent could result in loss of the patent or its value all together, so careful attention needs to be taken.

It is possible to correct the inventors if some have been incorrectly added or omitted. To do so, a petition stating that an error has been made and should be corrected, complete with the signatures of all the inventors and assignees must be sent to the United States Patent and Trademark Office (USPTO). If all of the parties don’t agree, the assignee can file a request for a reissuance of the patent to name all the correct inventors.

If the party who feels wronged filed a lawsuit and everyone else doesn’t agree that the inventors should be changed, the Court will require evidence to corroborate the requested change. By keeping detailed and dated records of the development and the contributions of each person you can provide this to the court to help in the decision. A court can also order the USPTO to make the correction if the wronged party filed a lawsuit. If the correction cannot be made, the patent will be lost.

An owner of a patent does not have to be an inventor; however, an inventor can be an owner. Being an owner of a patent gives you the value of the patent and prevents others from infringing. A legal document called an assignment transfers the rights of the inventors, or assignors, to the owner, or assignee, in order for ownership to be acquired from the inventors.

After the issuance, all the inventors own an equal right to the patent and each can sell it, license it, make and sell the product or process without consent of any other inventor. And since all the owners have to be together in a lawsuit, if one doesn’t agree then that negates the lawsuit. To prevent such situations, the rights are assigned to a single person or entity. Once this person or entity is assigned then they own all rights to the patent.

However, each inventor owns a pro rata undivided interest in the entire patent, even an inventor of only one dependent claim owns the patent equal to the inventor of 99% of the patent. Even with an assignment, if an inventor is missed you may find that person owns the same rights as someone listed in the patent.

Collaboration with outside experts on drafting the patent usually means they become inventors. But many businesses or individuals believe that since they hired and paid an expert to help develop the product or process, they themselves own the patent and don’t have to add the expert on as an inventor. They may think that because it was their idea, it’s not necessary or important to add them. Whatever the case, whether the experts are listed as an inventor or not, they may still be able to license their own patent.

In order to avoid this situation, have all possible inventors sign an assignment agreement that transfers their rights to a single person or company that then has the rights to use the product or process of the patent. Another way to alleviate this problem is to have all employees, consultants and experts sign an agreement requiring them to assign any Intellectual Property rights to the business and cooperate in the patent process.

In summation, it is critical to name all the inventors in a patent correctly. Careful attention needs to be taken to record the contributors, their involvement and dates of the development process. Everyone included in the development needs to sign agreements to transfer their rights to a single entity. Review this with your counsel to decide who should be named as inventors so you don’t have any unwanted inventors popping up later on when you least expect it. With planning and record keeping now, you can be assured that you don’t lose your patent due to a disgruntled inventor in the future.

Footnotes:

2020/10/21, “Getting a Patent: The Devastating Consequences of Not Naming All Inventors,” William Honaker, https://www.ipwatchdog.com/2020/10/21/getting-patent-devastating-consequences-not-naming-inventors/id=126534/