The application is required to be made or authorized by the actual inventor of the claimed subject matter. Also, the inventor must sign a statement, under oath, that acknowledges the duties attendant to obtain a patent, as required under §§111 – 115 of the United States Code.
Even though the proprietary rights of a patent initially vest in the inventor, those rights are considered a form of personal property, which means that they can be transferred. Therefore, it is fundamental to differentiate between “ownership” and “inventorship”.
In the case Beech Aircraft Corp. v. EDO Corp. (990 F.2d 1237 (1993)), the United States Court of Appeals stated that:
Inventorship is a question of who actually invented the subject matter claimed in a patent, while ownership is a question of who owns legal title to the subject matter claimed in a patent.
Ownership allows the owner to:
- Grant a patent license
- Assign patent shares
- Sue per infringement of that patent
Characteristics that, despite its importance, are not a part of Inventorship. The proprietary rights in a patent rest with the owner and can be conveyed to another by mutual agreement even before the invention is conceived. Those rights can be parcelled out by assignment or license.
To take into account: Ownership and licensing of patent rights are matters of state contract law, as it was stated in cases as McCoy v. Mitsuboshi Cutlery, Inc. (1995)
- Who can be the owner of a patent?
Under the US Regime, any person, corporation commercial laboratory or legal entity may be the owner of a patent.
- Joint ownership:
Under the US Regime, joint ownership is possible. Each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent and without accounting to the other owners.
The proportion of the co-owners’ shares is relevant only when an award is recovered for infringement, where each of the co-owners is given his proportionate share.
