Understanding patent ownership is critical before filing a patent application. This article explains the three foundational concepts — joint ownership, inventorship and assignment — that determine who controls a patent application and who owns the resulting issued patent.
You have developed a useful and valuable invention and you are preparing to file a patent application. Before you do, there is an essential question to answer: who actually owns the patent?
The answer is not always obvious, and the consequences of getting it wrong can be significant. Whether you are an independent inventor, a startup founder or a business owner with employees working on new technology, these three patent ownership concepts are critical to understand before you invest further in the patent process.
1. Joint Ownership: Each Owner is Equal
By default, patents are owned jointly. This means that when more than one person contributes to an invention, each owner holds the same fundamental right: the right to exclude others from making, using, offering for sale or selling the patented invention in the United States.
Joint ownership works as follows:
- Two inventors each own a 50% interest.
- Three inventors each own a one-third interest, and so on.
- Each joint owner may independently license the patent to third parties — without the consent of the other owners.
- Each joint owner may assign their ownership interest to a third party.
This structure has important practical implications. Because any joint owner can independently grant licenses, one co-owner can effectively allow a competitor to use the invention without the other owner’s approval. For this reason alone, it is essential to address ownership expectations early — ideally before any patent application is filed.
2. Inventorship: Who Legally Qualifies as an Inventor?
Inventorship is the first determining factor in who owns a patent. In the absence of any other agreement, the inventors named on a patent application are the owners of that application and any issued patent that results from it.
A person qualifies as an inventor if they contributed to the conception of at least one claimed element of the invention. Conception means contributing to the underlying idea — the intellectual creation of the invention. Simply executing someone else’s idea, or “reducing it to practice,” does not meet the legal standard for inventorship.
Two important rules follow from this:
- You cannot name someone as an inventor as a gesture of goodwill or as a reward for their contributions to your business. Inventorship is a legal and factual determination, not an honorary title.
- Incorrect inventorship can jeopardize the validity of a patent, so it is important to work with a patent attorney to identify inventors accurately.
That said, a named inventor, as an owner of the patent, may assign their ownership rights to any third party for any reason — including to a company or employer.
3. Assignment: Transferring Patent Ownership
Assignment is the mechanism by which patent ownership is formally transferred. An inventor or patent owner may assign all or a portion of their rights in a patent or patent application to another party. Assignments must be made in a written agreement.
Assignment is particularly important in employment contexts. It is standard practice for employers to require employees to assign any intellectual property — including patent rights — to the company as a condition of employment. If you employ or contract with people who are developing inventions on behalf of your business, you should have a properly drafted intellectual property assignment agreement in place.
Without such an agreement, the individual inventor — your employee or contractor — may retain personal ownership of valuable intellectual property, even if it was developed on company time and with company resources.
Assignments may be recorded with the United States Patent and Trademark Office (USPTO), which provides constructive notice of ownership to third parties and is strongly recommended.
4. The Patent Applicant: Who Can File?
The applicant for a patent application may be the inventor, the patent owner or a party to whom the inventor has assigned — or has an obligation to assign — ownership rights. While an inventor must be an actual person, an applicant may be a corporation or other legal entity.
An applicant may file and prosecute a patent application on behalf of joint inventors. In the absence of a recorded assignment, the applicant is presumed to be the owner of the patent application. To formally perfect ownership of a patent application and any resulting issued patent, an actual assignment must be executed and, preferably, recorded with the USPTO.
Key Takeaways
Patent ownership is not always straightforward, and the default rules do not always align with what inventors and business owners intend. Here is a brief summary:
- By default, all named inventors are joint owners with equal rights.
- Inventorship is a factual and legal determination — not an honor that can be granted.
- Ownership can be transferred through a written assignment agreement.
- Employers should have IP assignment agreements in place before development begins.
- Assignments should be recorded with the USPTO to protect ownership rights.
Given the complexity of patent ownership and the potential consequences of missteps, it is important to consult qualified patent counsel before filing a patent application or entering into any agreements affecting patent rights.
Schedule a Consultation → Book a no-cost 30-minute initial consultation with McConnell Law Firm PC to discuss ownership of your invention.
This information is general in nature. Always consult with a licensed patent attorney for advice specific to your situation.
Robert McConnell is the Principal Attorney of McConnell Law Firm PC, with more than 20 years of startup and legal experience in both Silicon Valley and Los Angeles.