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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.

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