Who owns the IP?

Many patent applications are filed in the name of a company, which becomes the owner of the associated patent rights. However, this is not automatic. A company cannot “invent”, and so it is strongly recommended that an agreement exists that transfers the rights in the invention from all the inventors to the company.

This may be in the form of an employment contract, or a specific assignment, for example.

Also relevant is whether inventors can assign their patent rights. This can arise when there are conflicting agreements. This can be borne from an inventor’s involvement with multiple organisations – whether as contractor, an employee, a director or an academic.

Most jurisdictions demand that formal documents, such as assignments or inventorship declarations, are filed before a registered IP right, such as a patent application, can proceed to grant. More critically, patent rights can be irretrievably lost if the right information is not provided by the deadlines set by the official body. This is certainly true of the IP offices of the UK, Europe, US and many more of the commercially-important jurisdictions in the world.

Notwithstanding the above, inventors will normally be specifically named on a patent application alongside the patent applicant. This can be a welcome source of acknowledgment and prestige when the patent application is published.

For any more information please contact Carl Steele.

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