Preserving Patent Rights to Company Technology

Brian Fitzpatrick, Associate, Koppel, Patrick, Heybl & Philpott, USA
Michael Ram, Senior Counsel, Koppel, Patrick, Heybl & Philpott, USA

In the United States, patents are issued to the inventors and control of the prosecution of patent applications is presumed to be with the inventors. However, ownership of those patents and the right to control prosecution of the applications for patent are transferable by the inventors to a third party when appropriate written documents are timely and properly prepared and executed. In the absence of properly prepared Assignments, all rights in the patent will remain with the inventors and each inventor who has not assigned the invention will have the right to independently practice, license or assign the patent to a third party without the consent of the employer or other inventors and the employer will have rights to the invention only from the assignees. While the United States Patent and Trademark Office (USPTO) has established procedures for a company to assert its rights in inventions of its employees, consultants and contractors, the absence of a proper paper trail and properly executed Assignments and inventor Declarations can jeopardize the ability of the company to secure and protect its patent rights. In particular, the USPTO requires a Declaration signed by each inventor of the claimed invention. In the absence of those Declarations the patent may never issue even if the claims are found to be patentable and if proper Assignments are not recorded with the USPTO a Power of Attorney appointing a US attorney or Patent Agent to prosecute the application won't be accepted by the USPTO. These issues become even more complex when the invention is made outside the US and years prior to US filing. The USPTO statutory, regulatory and procedural requirements regarding ownership of patents are addressed and explained.

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USA Intellectual Property Consultant April 2016 Vol. 9, No. 35, Spring 2016

Brian Fitzpatrick

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Brian Fitzpatrick is an Associate at Koppel, Patrick Heybl & Philpott located in Westlake Village, CA where he handles a broad range of intellectual property matters. Mr. Fitzpatrick earned a B.S. in Biological Sciences and a B.A. in Political Science fr

Michael Ram

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Dr. Michael J. Ram is Senior Counsel at Koppel, Patrick Heybl & Philpott located in Westlake Village, CA where he handles intellectual property matters Worldwide. His expertise includes all aspects of US and foreign patent prosecution including procedures

Koppel, Patrick, Heybl & Philpott

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Koppel, Patrick, Heybl & Philpott (KPHP) focuses exclusively on intellectual property matters, including patent, trademark, copyright, and trade secret law and Agreements and policies necessary for clients to protect that IP. KPHP is dedicated to providi

USA Intellectual Property Consultant April 2016 Vol. 9, No. 35, Spring 2016