Saturday, August 19, 2006

Do Not Name a Wrong Inventor

Misjoinder, that is, naming someone as inventor when they are not, is not generousity but a mistake, for both of you. Sharing is done by assignment, not by misjoinder.

U.S. patent laws require the identification of all individual inventors. Failure to name an inventor, or naming a non-inventor as an inventor, can invalidate any patent that might issue from an application. (There is no legal significance in the order in which inventors are named.)

Only persons who contributed to the conception and/or the conversion of a conception to a practicality are inventors. Persons who contribute financing or marketing or other auxiliary assistance only are not inventors.

Persons or businesses can acquire an ownership interest in a patent application by assignment from the inventor. The inventor granting the assignment is an assignor. The person or business receiving the assignment is the assignee.

An inventor can assign a co-ownership interest by assignment to himself/herself and a non-inventor jointly.

The granting of such ownership or co-ownership rights should never be attempted by misjoinder of persons as inventors when they are not.

A patent application is owned by the inventors, as tenants in common, if there is no assignment.

Reprinted from

Saturday, August 12, 2006

Idea Theft Can be a Tough Road

Someone stole your idea, and you want payment for it, or credit for it, or both. This can be a tough road.

Type 1 - looking for the link:

It was your idea, and now its out there.

Therefore there must be a link between your idea and them.

You told X who might know Y who might have worked at Z company …

Or you wrote to A.A. and the letter was lost in the mail, or misplaced …

Type 1 - solutions:

Someone had the same idea later (it happens), and if you did not protect the idea (for instance by filing a patent application) there is no recourse.

Someone had the same idea earlier (if its out there within a few months of your brain-storm, earlier is likely because “out there” takes lots of time), there is obviously no recourse – you are second.

Either of the above, and the idea is old (for instance findable in the patent literature), there is of course no recourse – and a professional patent search can confirm it was not new to begin with (it happens, a lot).

Someone did steal it from you – but since the other possibilities are viable (at times more viable), and the third can be checked with a patent search, start with a patent search.

Type 2 – link is clear because you told them:

You gave the idea to the company’s marketing manager over the telephone.

You demonstrated a prototype to the company’s sales manager.

You mailed a sample to the company’s division Vice President.

Type 2 – solutions:

If you have a patent, and they are actually infringing one or more claims of the patent, you have recourse via a patent infringement lawsuit (and contingency-based actions are possible).

If the idea was artistic or literary, and the idea was not merely in your head but had been affixed in a tangible medium (painted, sculpted, written), and preferably also a copyright registration, you have recourse via a copyright infringement lawsuit (and contingency-based actions are possible).

If you have no patent, or no tangible-medium affixation, or no copyright registration, some (not all) jurisdictions might entertain alternative lawsuits, for instance an implied contract lawsuit, but this can be a difficult matter – there typically are who said what, when and to whom issues, and issues regarding whether it was sufficiently new to justify any recovery, or merely a generic (old hat) idea to begin with.

Without patent or copyright protection in-hand, either type should start with a good search to objectively determine the novelty of the idea before investing any further time or effort.

Reprinted from