What things should be included in an Agreement between co-inventors before submitting a patent application?
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I am working with three people who are co-inventors of a new device. They plan on initially submitting an application for a provisional patent and a utility patent within 12 months. To address any potential for disagreement or problems in future they will need an agreement on the share of ownership in future value and/or proceeds. What should that Agreement include? Are there sample Agreements available?
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Answer:
This is not legal advice for your particular situation, and it dodges the question more than it answers it, but: From a patent attorney's perspective, I think the first thing to do is to separate any dispute over ownership of the business from ownership of the patent by assigning ownership of the inventions and the patent applications to a business entity before filing. It doesn't solve the problems of what an ownership agreement of the business entity should include, how profits should be divided, etc., but it does shift those disputes to ownership of the company, as opposed to ownership of the patent. If you're fighting over ownership of the patent itself, it hurts the value of the patent, because any potential buyer is going to discount it based on the fact that clean title might be difficult to obtain. If you're fighting over ownership of the company instead, the value of the patent stays intact. Figuring out how to share that value is left as an exercise for the reader.This answer is not a substitute for professional legal advice....
David Sheldon at Quora Visit the source
Other answers
If you don't do anything, each of the co-inventors will have full rights to go and license the patent on his/her own. (read: http://www.legalzoom.com/intellectual-property-rights/patents/joint-ownership-patents ) Things to consider: Ownership, not just of the patent, but also continuations, divisionals, etc. Prosecution (nice to agree to a single attorney) Cost sharing (Maintaining and prosecuting patents can be expensive, what if one party does not pay its share?) Sharing of proceeds. Here is an example between two institutions: http://www.kaganbinder.com/docs/17-JointInvention.pdf Obviously, legal advice is advised.
Konstantinos Konstantinides
Co-inventors should agree on few critical points before submitting a patent application. The decision regarding ownership of the patent should be taken beforehand. This is critical because patenting (and maintaining the patent) involves money and cost sharing should be done depending on the extent of ownership a co-inventor has on a patent. They should also make sure that how they would go about using the patented product/technology in future. Whether they want to use it, sell it or license it, is a crucial question and must be addressed at an early stage. If there is any scope and the co-inventors wish to file for continuation applications, that should also be agreed upon beforehand.
Tarun Kumar Bansal
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