A patent application may only be filed in the name of the person who owns the invention. While this may sound straightforward, ownership of an invention is not always clear, and disputes often arise.
In the UK, and most other jurisdictions, the inventor is the person entitled to the rights of an invention, including the right to file a patent application. Where the inventor is employed, these rights are usually automatically transferred to the employer, even when working out of hours. However, this is not always the case, and patents can be filed incorrectly because an employer has assumed they own the rights to an invention.
Patents can also be co-owned, and any number of applicants may be named on a patent providing at least one is the rightful owner of the invention. However, care should be taken when entering into joint ownership arrangements as they can often have problematic and unintended consequences, particularly if relations between parties break down.
A common ownership dispute arises where work is commissioned or outsourced to a third party. There’s a need for a contract which clearly sets out the ownership before any work is commenced. In most situations, these agreements will establish that rights are owned by the commissioner.
Co-development arrangements can also lead to ownership disputes when it’s unclear as to which party has generated an invention. A co-development agreement should be completed at the outset which clearly defines how any IP arising from the project will be owned.
How we can help
We can advise you with regard to patent ownership, relevant contractual clauses, and how ownership issues may be relevant to your patent applications.
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