How is inventorship different from ownership with regard to a patent document?
Minneapolis patent attorney Suneel Arora of Schwegman Lundberg & Woessner discusses inventorship and ownership in the context of patent documents.
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Initially, when you file a patent document and it can name one inventor or it can name multiple joint inventors that actually collaborated to come up with the invention. Ownership, initially, rests in the inventors themselves. So if you have two inventors that contributed to the patent application and both are named and that patent actually issues, then both of those inventors own that patent application and can legally make use of the patent application without accounting to the other inventor.
And so what that means as a practical matter is that if you have joint ownership, if you have two different owners that can independently have access to and use or license to others the patent it actually can diminish the value of the patent. Because if one of those owners actually goes out to assert the patent against others, the accused or the licensee, the prospective licensee can go to the other owner and seek a license. So there’s always another party available to negotiate with if there are multiple owners.
So from a patent attorney standpoint what we would like to do is we would like to tie up ownership in a single entity. So whether it’s a single business entity we could have the two inventors assign their rights into a single business entity and that way whoever the single owner is can go out and license that patent and not have to face this problem of the potential licensee doing and end run around and trying to get a cheaper license from the other owner.