13.3 Inventorship, Ownership & Assignment Recordation
Key Takeaways
- Joint inventorship under 35 U.S.C. § 116 requires a contribution to the conception of at least one claim; inventors need not work together physically, at the same time, or make equal contributions.
- Under § 262, each joint owner holds an undivided interest and, absent an agreement, may practice or license the patent without another owner’s consent or an accounting; the statute does not itself assign equal economic percentages in every ownership instrument.
- Inventorship is an unalterable determination of who conceived the subject matter, whereas ownership (title) may be assigned to corporations or employers.
- Patent assignments must be in writing; assignments, licenses, and security interests may be recorded with the USPTO using the Rule 3.31 cover-sheet procedure, but recordation does not adjudicate transaction validity.
- Under 35 U.S.C. § 261, an assignment is void against a subsequent bona fide purchaser (BFP) for value without notice unless recorded in the USPTO within 3 months of execution or prior to the subsequent purchase.
13.3 Inventorship, Ownership & Assignment Recordation
Exam Tip: On the Patent Bar, joint ownership default rules under 35 U.S.C. § 262 (licensing without consent or accounting) and the 3-month BFP recording rule under 35 U.S.C. § 261 are amongst the most heavily tested ownership concepts. Memorize them cold!
1. Joint Inventorship Standards (35 U.S.C. § 116)
Under U.S. patent law, inventorship is strictly determined by mental conception of the claimed invention. An inventor is any natural person who contributed to the conception of the subject matter claimed in a patent application.
Legal Requirements for Joint Inventorship
Under 35 U.S.C. § 116(a), when an invention is made by two or more persons jointly, they shall apply for a patent jointly. The statute explicitly provides that joint inventors do NOT need to:
- Work together physically or in the same geographic location.
- Work at the same time or make contributions simultaneously.
- Make equal contributions (in quantity or quality) to the invention.
- Make a contribution to the subject matter of every claim in the patent.
Contribution to Conception of AT LEAST ONE Claim = Joint Inventor Status
What Does NOT Constitute Inventorship?
- Reduction to Practice Only: Carrying out laboratory experiments or building a prototype following the instructions of another person without contributing to conception does NOT make a person an inventor.
- Financial / Managerial Support: Providing funding, lab space, or general supervision without conceiving claimed subject matter does NOT confer inventorship.
2. Patent Ownership vs. Inventorship
It is vital to distinguish between inventorship (who created the invention) and ownership (who holds legal title to the patent).
- Inventorship: Always vests initially in the natural persons who conceived the invention. Corporations, entities, or universities can never be listed as "inventors" on a U.S. patent.
- Ownership: Patents have the attributes of personal property (35 U.S.C. § 261). Legal title initially belongs to the inventors but may be assigned or transferred to corporations, employers, or third parties.
Default Rights of Joint Owners (35 U.S.C. § 262)
In the absence of any contractual agreement to the contrary, 35 U.S.C. § 262 governs the legal relationship between joint owners of a U.S. patent:
35 U.S.C. § 262 Rule: Each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, for his own account without the consent of, and without accounting for royalties to, the other owners.
| Ownership Dimension | Statutory Default Rule under § 262 | Impact / Best Practice |
|---|---|---|
| Licensing | Each co-owner can grant non-exclusive licenses to third parties without consent. | Co-owners can license competitors independently. |
| Royalties | Co-owners do NOT have to share licensing revenues or profits with each other. | Must override § 262 via private written agreement! |
| Enforcement / Lawsuits | All co-owners MUST join as co-plaintiffs to have standing to sue an infringer. | One co-owner can block an infringement suit by refusing to join! |
3. Employer-Employee Rights & Shop Rights
When an employee creates an invention during employment, ownership rights depend on written contracts and common law doctrines:
1. Express Agreement to Assign
If an employee signs an employment contract containing a covenant to assign inventions created during employment, legal title transfers to the employer pursuant to the contract terms. Under the AIA, an employer assignee can file and prosecute the application as the "applicant" under 35 U.S.C. § 118.
2. "Employed to Invent" Doctrine
In the absence of a written contract, if an employee is specifically hired or directed to solve a specific problem or create a particular invention, common law implies an obligation to assign the resulting patent rights to the employer.
3. Shop Rights
If an employee conceives and reduces to practice an invention using employer time, facilities, materials, or equipment, but was NOT hired to invent and signed NO assignment agreement:
- Employee retains legal ownership (title) of the patent.
- Employer acquires a "Shop Right": A non-exclusive, royalty-free, non-transferable, irrevocable license to practice the invention in the employer's business.
4. Assignment Recordation in the USPTO (37 C.F.R. § 3.11 & MPEP Chapter 300)
An assignment is a formal written instrument transferring legal title to a patent application or issued patent.
Recording Mechanics
- Assignments are recorded in the USPTO Assignment Recordation Branch under 37 C.F.R. § 3.11.
- Submission must include the assignment document (or legible copy) accompanied by a completed Assignment Cover Sheet under 37 C.F.R. § 3.31.
- Cover sheet requirements include: party names, application/patent number, reel and frame indexing details, entity status, and signature.
Administrative Effect of Recordation
Recording an assignment with the USPTO creates a searchable public record. However, recording is a ministerial act:
- Recording does NOT certify or guarantee that the assignment is legally valid.
- The USPTO does NOT verify title validity or resolve legal ownership disputes.
5. The 3-Month Bona Fide Purchaser (BFP) Rule (35 U.S.C. § 261)
To protect assignees against conflicting transfers of title, 35 U.S.C. § 261 establishes a strict recording grace period rule:
35 U.S.C. § 261 Statutory Rule: An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice [Bona Fide Purchaser], UNLESS it is recorded in the Patent and Trademark Office:
- Within 3 months from its date of execution, OR
- Prior to the date of such subsequent purchase or mortgage.
Analysis of Priority Battles Under § 261
Scenario: Assignor executes Assignment #1 to Party A on Jan 1.
Assignor executes Assignment #2 to Party B (BFP) on March 1.
Result 1: If Party A records by March 31 (within 3 months of Jan 1), Party A WINS title.
Result 2: If Party A fails to record by March 31, BUT records on April 5 (after B's March 1 purchase), Party B WINS title!
| First Assignee (A) Action | Subsequent BFP (B) Date | Outcome | Legal Rationale |
|---|---|---|---|
| Records within 3 months of execution | Purchases after A's assignment | A Wins | Timely 3-month recording protects A against all subsequent BFPs. |
| Fails to record within 3 months, but records BEFORE B purchases | Purchases after A's recording | A Wins | Recording prior to B's purchase gives B constructive notice. |
| Fails to record within 3 months, and records AFTER B purchases | Purchases before A records | B Wins | A's assignment is void as against BFP B under 35 U.S.C. § 261. |
Two independent researchers, Dr. Aris and Dr. Bell, are listed as joint inventors on an issued U.S. utility patent. There is no written contract or agreement between them regarding patent rights. Dr. Aris grants an exclusive commercial license to Company X without Dr. Bell's knowledge or consent, and retains 100% of the royalties. What are Dr. Bell's legal rights under 35 U.S.C. § 262?
Which of the following individuals qualifies as a joint inventor on a U.S. patent application under 35 U.S.C. § 116?
Inventor Inventor-X executes a written assignment of all rights in Patent P to Purchaser A on January 10. Purchaser A does not record the assignment with the USPTO. On March 15, Inventor-X fraudulently executes a second assignment of Patent P to Purchaser B, a bona fide purchaser for valuable consideration who has no knowledge of the prior assignment to A. Purchaser B immediately records the assignment on March 15. Purchaser A finally records their assignment on May 1. Who holds legal title to Patent P under 35 U.S.C. § 261?
An employee scientist conceives and builds a new testing device at work using company tools and equipment during regular working hours. The employee was not hired to invent, and there is no written employment contract regarding patent rights. What patent rights does the employer possess under the 'Shop Rights' doctrine?