Facebook Twitter LinkedIn

Home Back Issues No. 23: Intellectual Property: What are the rights of co-inventors?

Apr 05

No. 23: Intellectual Property: What are the rights of co-inventors?

Posted by: PIA in

Tagged in: Untagged 

Sign Up to receive free weekly articles like these

Intellectual Property:

What are the rights of co-inventors?

Reader Question: If I research one-half of a problem and a friendly PI in another institution researches the other half and our efforts result in a patentable invention, which of us owns the intellectual property rights? Do either of our host institutions have a say in this?

Expert Comment: The short answer to the last question in most cases is Yes. Both institutions have a say — but there might be an exception if you are an undergraduate student.

If you are a PI at a research institution, it would be surprising if your institution did not have a technology transfer office and an intellectual property (IP) policy.

Your employment agreement very likely has either an inventions clause, providing that the institution or its technology transfer corporation or foundation owns any inventions created by you during your employment, or that your employment is subject to the institution’s IP policy that effectively conveys those same ownership rights to your institution. Most institutions (e.g., universities) publish their IP policy on the Web.

Meanwhile, the friendly PI at the other institution likely is subject to a similar employment agreement or IP policy.

An exception could occur in the case of an undergraduate student, who typically does not have an employment agreement with the university and is subject to its IP policy only to a limited degree.

Assuming that you and your friendly PI both contributed to the conception and reduction to practice of the patentable invention (both steps being required under the U.S. patent law to create a situation of co-invention), then both you and your friendly PI are co-inventors.

As co-inventors, rights in and to this invention initially vest in both of you. But, because both of you are subject to an employment agreement or an IP policy providing that your respective institutions own the rights in and to your respective interests in this invention, each of your institutions has an ownership interest.

What is counter-intuitive under the patent law is that co-owners of an invention individually can do whatever they want with the invention without having to communicate, cooperate, or share revenues with a co-owner. Surprisingly, many co-owning institutions seem to have difficulty reaching an inter-institutional agreement controlling their respective rights, how the invention will be commercialized, and how any costs will be shared (such as those related to the patent application).

Comments by Todd Deveau, JD, partner, Thomas Kayden Horstemeyer & Risley, LLP, an intellectual property law firm in Atlanta.

Enjoy this article? Sign Up to receive these free every week

Do lab animal regulations and compliance issues concern you? You should see our NEW sister e-newsletter, Lab Animal e-Alert, which is devoted exclusively to providing Principal Investigators WEEKLY alerts on the welfare and regulatory compliance issues pertaining to laboratory animal research. It is distributed worldwide, without charge, to hundreds of thousands of Principal Investigators whose research involves animals. Just register your email to get your issues flowing.

Comments (6)
written by labyrinth, April 06, 2010
An innovation that I and a fellow PI spent long hours working on was patented last year and our two universities are now technically co-owners. I just found out that his university found a marketing niche for it and has been making a good deal of money from it over several months. You'd think they'd at least have had the courtesy to notify me--I just found out a couple of weeks ago. The law shouldn't allow one party to just grab the money and not even notify me or my university.
written by pbock, April 06, 2010
What if people whose GENES have been patented sued corporations as "co-inventors" of DNA sequences? This might put a stop to many abuses.
written by Shocked, April 06, 2010
Startled at your last paragraph saying the "other university" which co-owns the invention has no duty to clear its plans or action with my university (also co-owner--of my invention). This is exactly what happened to me, and I couldn't believe it was legal. Do I, or does my university, now have any legal redress to get for ourselves 50% of the royalty monies that other university obtained without our knowledge? Doesn't "co-inventorship" of the patent give me or my institution any rights? If not,what's the poijnt in even being listed as co-inventor? Is there a legal case or precedent on this point?
written by Dr Fred, April 06, 2010
A co-inventor is required to have contributed at least one claim to a patent for an invention. If both parties (i.e. the person who submitted the question and the friendly PI) were listed as inventors on the patent application as filed, they have both constructively reduced the invention to practice.
written by Dr J, April 07, 2010
I think Mr. Deveau overstated the rights of individual inventors just a bit. As I understand it, any individual inventor can license a patent without consent from and without informing the other inventors, but only in a non-exclusive fashion.
Inter-Institutional Agreements
written by Tech Transfer, July 12, 2010
Hopefully your institution entered an agreement with the other institution.
The terms of the agreements may vary on a case by case basis. The prime scenario would be to assign one institution as the lead that seeks patent protection and licensing opportunities. Once the patent is licensed and legal fees are reclaimed, then the lead institution would then begin paying royalties to the secondary institution. Transparency is required (meaning the lead would keep the secondary apprised of all legal fees as they occur as well as the disposition of the patent throughout prosecution).

In other situations, the legal fees are shared equally during prosecution and each institution is entitled to license the IP non-exclusively as they see fit, without sharing of royalties. In this case, if one institution is better at licensing then the other, the more successful institution will reap the rewards, and therefore their inventor will also reap the benefits.

I would suggest that PRIOR to conducting any research with PI's outside your institution, an agreement be in place that details how IP, licensing, and royalties will be handled.
If each institution decides to handle their own licensing, make sure the agreement states that the inventors will share royalties regardless of which institution drafts the license!

Write comment
smaller | bigger

Write the displayed characters