Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 101

In the United States, patents are granted only to the first and original inventor or joint inventors who are first to file a patent application describing and claiming the subject invention, or anyone asserting rights obtained from the inventor, such as an employer to whom the inventor(s) are obligated to assign their inventions, such as commonly found in employment agreements. It must be understood that one who merely recognizes the commercial merits of an existing product or idea, or who discovers technology in a previously written document, may not properly be awarded a patent. The invention must have been invented by the person or persons applying for the patent. In the United States, a corporation or business entity can pursue patent protection on a development independently of the inventor, if, as stated earlier, the inventors have agreed to assign patent rights to their employer, usually as a condition of employment. The patent assignment document is usually signed by the employee on the first day of employment, along with tax documents and confidentiality agreements.

An invention can be made by one, two, or any number of persons. Thus, many patent applications frequently name joint inventors. However, the following important rule must be kept in mind among the joint inventors. Unless there is an agreement or an obligation to assign the patent to one or a few of the inventors, or to a certain third party, such as the employer or a company set up by the inventors, each inventor will end up with the independent right to commercialize the invention, with no duty to account to the other inventor or inventors for his/her actions, or his/her royalties or revenues. This would be true regardless of the percentage of the patent any one joint inventor owns. Also, none of the joint inventors has the right to exclude any of the other joint inventors from practicing the invention, nor to prevent any joint inventor from granting licenses to others under the patent rights.

Normally, the question of ownership of an invention, and of the patent rights covering that invention, are handled in a corporate or large entity environment by obligating all of the inventors to transfer all of the rights in the patents to the employer by way of assignment from the individual inventors. However, if several inventors combine to produce an invention on their own, outside of a corporate structure, for example, it is extremely important that the rights, obligations, and limitations of the joint inventors vis‐à‐vis the invention be defined in a written joint development agreement before the patent application is even filed or ultimately issued to prevent problems in the future. In such cases, the number of inventors may form a separate new entity, such as their own corporation, LLC, or partnership, to which the patent rights are assigned. Then, it becomes the duty of the management of the new corporation or partnership to decide the direction of and limitations on commercialization of the invention, and the distribution of the rewards from that commercialization through prudent corporate management principles. If you find yourself in this situation, I strongly suggest discussing a joint development agreement with your patent professional.

It is not uncommon for several inventors, working independently of each other, to develop a same or similar invention at the same time, and for each to file for patent protection covering their invention. This is sometimes true, for example, in the pharmaceutical field, where several different companies are seeking a cure or treatment for a certain disease, and have all started with the same known “prior art” treatments. Each of these inventors or groups of inventors may arrive at the same end point independently. In this situation, who gets the patent? Under the recently enacted AIA, the patent is awarded to the first to file a patent application, unless one inventor or group of inventors derived the invention from the second to file, as discussed in section 7.2.1 of this chapter.