Co-Inventor: Everything You Need to Know
A co-inventor is someone who contributes to the creation of an invention in partnership with one or more other inventors.3 min read
A co-inventor is someone who contributes to the creation of an invention in partnership with one or more other inventors. Each contributor is listed as a co-inventor on the patent application. The group of co-inventors listed in the documentation is collectively referred to as an inventorship.
Conception is the process of forming the definite and permanent idea for the inventor's creation as it will exist in production. Conception gives the inventor "mental dominion" over the invention. The inventor controls the intellectual pursuit and provides the ingenuity to see the invention through to creation.
An invention begins with an idea, but in and of itself, an idea is not enough to qualify as an invention. The legal definition of conception calls for an idea plus a plan. Once you have the idea, you need a plan on how to make the idea a reality.
To be named as a co-inventor in an inventorship, a party must have contributed to the creation of an invention. If a party did not contribute to the creative process, he or she is not an inventor. An inventor holds the intellectual rights to the invention. To be a co-inventor, you must contribute something to the conception — supervision of the inventor and acting under the direct supervision of the inventor don't count.
Inventorship is not negotiable. One party cannot agree to leave a contributor off the list of inventors. Likewise, a party cannot agree to add someone to the list who is not a contributor. Everyone who contributed must be listed. However, if the group hires someone to carry out a task, such as creating a prototype, and the contractor simply follows the instructions given, then the contractor may not be considered an inventor.
Patent law states that in any patent application with two or more co-inventors, each one owns the patent jointly with the others. However, each co-inventor can license, sell, market, or otherwise grant patent rights without sharing the proceeds from those transactions with the other co-inventors. The individual co-inventor does not have to seek permission or agreement from the other co-inventors to carry out those activities.
When a project involves multiple co-inventors, the best way to protect everyone's interests is to form a legal entity with each co-inventor owning an interest or share. The ownership of the creation is transferred to that legal entity. The documents governing the operation of the entity should include:
- How much interest each co-inventor owns. Non-inventors may be part of this group as well.
- How the invention will be commercially marketed or used.
- How disputes that arise between co-inventors will be handled.
- What happens if co-inventors disagree on the plan for the invention.
- Any other business considerations specific to the situation.
The legal entity can be a partnership, LLC, corporation, or another type of business structure. This entity will own the patent rights and make all decisions related to its commercial use. The company will also handle any action that needs to be taken if a co-inventor no longer wants to be part of the group. The legal entity can draw in new partners and licensees by offering them just one entity to deal with as opposed to dealing with multiple co-inventors.
The ownership of the invention is negotiable and transferrable. For example, if one person thinks up an invention and a second person funds the pursuit of the patent and the development of the product, the first person would technically be the inventor. The funder would not be a co-inventor. However, they can form a legal entity and give each person an ownership interest. The inventor can sell all of their to the invention to the funder. The funder then becomes the owner, while the inventor retains that title.
Sometimes co-inventors create a problem by disagreeing on something related to the invention. For example, let's say that one inventor is affiliated with a business that is interested in licensing or selling the invention. That company may be less likely to buy in if it knows than other co-inventors could be making the same deal with a competitor, making the deal less valuable than if there were no competition.
If you need help with co-inventors or an inventorship, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.