A patent for an invention grants to an inventor the legal ownership rights for his or her invention. Once a patent has been granted to an inventor, an invention may not be lawfully manufactured, copied, used, or sold without the inventor’s consent (e.g., licensing agreements). The patent law provides for the granting of patents in three major categories: 1) utility patents; 2) design patents; and 3) plant patents. Most inventions fall into the utility and design categories.
Recently, I've been dealing with a lot of assignment issues, so let's dive into it. As you may have guessed, it is important to identify inventors, applicants, and owners of a patent. This usually comes into play during the application process, but also during due diligence when combing through your IP portfolio.
In case you're not sure who these people are supposed to be, here's a quick breakdown:
- Inventors are the people who conceive an invention. They are not necessarily the people who "validate" your idea or the people who reduce the invention to practice by building prototypes for you. Sometimes you may have more than one inventor. For instance, if I conceived 40% of the invention and my friend conceived 60% of the invention, then we are co-inventors. Inventors are default patent owners.
- Applicants are the people who apply for patent applications. Usually, applicants are either the inventors themselves or the assignees (which we will get to in a little bit).
- Assignees are the people who receive all rights to patent applications/patents (aka new owners). To become an assignee, you and the patent owner(s) must execute an assignment agreement and record it.
Many prospective patent applicants are eager to know if they are already infringing on an existing product before pursuing a patent application of their own. Most of the time, clients will come to me with pictures of competing products or a link to online stores carrying the competing products.
While it is helpful to look at competing products to see how one invention differs from another invention, it is often not easy to tell if one invention infringes upon the other. To do this, you have to look at a registered patent disclosing the inventions at issue.