12 September 2009

Thinking of a software patent? Who are the inventors?

You have an excellent idea for a new web 2.0 product. You need to file a patent application so that your potential investors will take you seriously. Your patent attorney tells you (or he should) that you need to provide enough information so that a person skilled in the field can recreate a preferred embodiment of the invention using that information.

Problem is, you've contracted with a software company to build the product for you. The Patents Act sets out that only the inventors have the right to apply for a patent in the absence of an agreement. As a result, employees of the software company may be entitled to the grant of a patent for the product.

This is a situation that arises regularly in my practice. My advice is that it's not enough to just have an agreement with the software company. It's very important that each employee or subcontractor, in their personal capacity, be obligated to transfer any intellectual property to either you or the software company.

There is a problem with many standard agreements, though. They don't take into account the fact that some jurisdictions, notably the United States, require that the patent application actually be filed in the names of the inventors. By the time you need to file in the United States one or more of the inventors may have been fired or resigned. Where the relationship has broken down, it may be difficult to get them to cooperate, even if they have assigned their rights to the company or to you. So it really does help where the agreement sets out that they are obligated to execute any documents necessary for the filing of foreign patent applications.

Make sure that you are in a position to give your patent attorney a copy of the employment agreement used by the company. If necessary, your patent attorney can prepare a confirmation of assignment document to be signed by the relevant employees. That document should obligate the employees to cooperate. Usually, if it is not possible to get the employee to cooperate, the United States Patent Office will accept such a document as evidence that you are entitled to be granted the US patent.

Please don't hesitate to give me a call on +61 7 55299396 or Skype me: "Blennerhasset" if you have any questions or require assistance in connection with your software product.

1 comment:

  1. Very nice information, it would be painful to share our ideas, and see a medium-size company which has enough resources making something useful from it. Market Research

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