Patent ownership · Founders, employees & contractors
Who owns the patent rights to your team’s invention?
A founder develops the first concept, an employee improves it, and a contractor builds the prototype. Before filing, a business needs to understand both who invented the claimed subject matter and how the relevant rights reach the company.
Separate inventorship, ownership, and the applicant.
- Inventorship asks who conceived the claimed invention.
- U.S. inventors must be people. A job title, funding contribution, or decision to form a company does not by itself establish inventorship. Joint inventorship depends on contributions to the claimed subject matter, not an equal division of work. See the USPTO’s inventorship guidance.
- Ownership asks who holds the rights.
- Inventors can transfer rights, so the inventors and owner need not be the same. Review the actual agreements and history of transfers.
- The applicant is the party applying.
- A company may apply as an assignee or obligated assignee when the requirements are met; the human inventors must still be identified. The USPTO’s applicant rules distinguish these roles.
Founders: trace the work from before incorporation.
Build a timeline of conception, development, company formation, and any transfer of rights. Identify work done before the company existed and later improvements. A cap table or founder title should not be treated as a substitute for reviewing patent ownership documents.
Locate agreements with former employers, earlier ventures, collaborators, and research sponsors. Flag overlapping obligations and any listed preexisting inventions. Confirm the intended owner’s exact legal name and whether signed documents cover the relevant invention. Address gaps with counsel while contributors and records are accessible.
Employees: review the agreement and applicable law.
Do not assume that putting someone on payroll automatically transfers every invention. The Supreme Court has distinguished employment from ownership. Written invention-assignment terms, job responsibilities, prior obligations, and the circumstances of development need review.
State law can limit an assignment clause’s reach; Washington’s employee-invention statute is one example. A clause used in one state may need different treatment elsewhere. The absence of a signed assignment also should not be treated as proof that an employer has no rights or claims.
Contractors: payment and confidentiality answer different questions.
Paying for development does not, by itself, establish a patent assignment. Review the agreement’s actual patent-rights provisions and who signed them. If a vendor used employees or subcontractors, ask how rights from the human contributors reach the vendor and then your company.
An NDA addresses confidentiality; its title alone tells you nothing conclusive about ownership. “Work made for hire” is a copyright concept, not a substitute for checking patent-assignment language. An agreement can contain several kinds of terms, so evaluate the whole document rather than relying on its label.
Check the transfer, then the record.
Under 35 U.S.C. § 261, patent applications, patents, and interests in them are assignable by a written instrument. Ask counsel whether existing wording makes a transfer or only creates an obligation to transfer, which rights it covers, and whether further signatures or documents are needed.
Recording an assignment at the USPTO serves a different function. The USPTO explains that recordation does not determine the document’s validity or its effect on ownership. A database entry cannot repair a missing or ineffective transfer. Ask about timely recordation and maintaining the full chain of documents.
Agree on how joint ownership will work.
Joint ownership can have consequences beyond sharing costs. Under the U.S. default, absent an agreement to the contrary, a patent co-owner can generally practice the patented invention or license others without the other owners’ consent or accounting to them. The USPTO describes these joint-owner rights. Other patents, laws, and contractual obligations can still constrain activity.
Discuss licensing authority, revenue arrangements, filing and maintenance costs, enforcement decisions, transfers, and what happens when someone leaves. Do not assume that equal ownership means unanimous control over every decision.
Prepare a private ownership file.
- Contributors, their roles, relevant dates, and records of their technical contributions.
- Company formation details, exact entity names, and changes of name or structure.
- Signed founder, employment, contractor, collaboration, and assignment documents, including amendments.
- Existing applications, recorded transfers, licenses, and known competing obligations.
- Upcoming filing, disclosure, financing, or transaction dates that counsel should know.
For teams working across borders, identify where contributors worked and which agreements apply. U.S. patent counsel may need to coordinate with local employment or business counsel. Do not assume U.S. ownership rules settle every foreign-law question.
Connect ownership questions with your filing plan.
Parti & Oliveira PLLC provides ongoing U.S. patent counsel for small businesses and patent application services. Identify ownership questions early so the proposed engagement can address the appropriate patent work and any need for other counsel.
Start with a nonconfidential description of the project, contributor relationships, countries involved, and known deadlines. Wait to share private agreements or technical material until an appropriate arrangement is in place.