Indian Patent Attorney, INTELLECTUAL PROPERTY STRATEGY, Patent Cooperation Treaty (PCT), Patent Filing India, Patent Innovative Ideas, patent research service, PATENT STRATEGY

Inventorship and Ownership of Patents?

 

Who is the owner of the patent?

Inventorship and Ownership of a patent are separate and distinct issues. Disputes mainly arise over ownership of inventions between employees and employers.

Generally, the inventor owns a patent. However, the inventor and the owner of the patent may be different. This typically occurs when the inventor assigns the patent to an entity, such as a corporation or a university.

Complex and serious legal issues involving the ownership of a patent often arise when inventorship or the duty of an inventor to assign the patent is not clearly defined.

With patents, the concepts of inventorship and ownership, though related, are distinct:-

Inventorship is a legal concept that is based upon who meets the requirements to be an inventor.

The concept of Ownership relates to who actually owns the legal rights associated with the patent.

In the case of an Independent Inventor, the inventor and the owner of a patent are usually the same. In a University or a Corporate Setting, the inventor does not own the patent. Rather, the University or Corporation is the owner.

Patent applications filed in the United States must be filed in the name of the person who invented the invention.

The act of invention has two parts, “Conception” and “Reduction of Concept to practice.”

Conception is the formulation in the mind of the inventor of the complete means for solving a problem in such a way that a person skilled in the relevant art could practice the invention by following the inventor’s conception.

However, an invention is not complete following conception, It must further be reduced to practice. This can be accomplished in one of two ways.

 There may be an “actual” reduction to practice, which is when the invention is made and tested to determine that it works.

However, reduction to practice does not require the invention to be made. An invention can be “constructively” reduced to practice by filing a patent application claiming the invention.

For purposes of invention, a constructive reduction to practice is considered to be equivalent to an actual reduction to practice.

The inventor is the individual who has concept of the invention, provided of course that there has been a reduction to practice. An individual who reduces the invention to practice by following the conception of the inventor is not considered to be an inventor.

There may be only one inventor, which occurs when one person has conceived of the entire invention. Very commonly, however, invention is a collaborative process involving two or more people. When more than one person contributes to the conception of an invention, each is considered to be a joint inventor.

Joint inventors do not have to have physically worked together on the invention. There must have been some collaboration, however, and each of the inventors must have worked on the same subject matter and must make some contribution to the conception of the invention as it is claimed in the patent. All of the joint inventors do not have to be inventors of every claim.

Even if an individual contributes a conception to only one claim in a patent, that individual is still a joint inventor of the entire patent.

Each of the joint inventors are named on the cover page of a patent. The order of the names of the inventors has no legal significance.

The rights in the patent of one named inventor are the same as those of each of the other named inventors, irrespective of the order in which they are listed.

One final point concerning inventorship is that an individual who has not contributed to the conception of the invention is not an inventor, and is not permitted to be listed on the patent as an inventor.

Even if someone has contributed a large amount of money to permit the inventors to work, or if someone heads the research department in which the inventors work, that person is not an inventor.

Inclusion of such a person’s name as an inventor on a patent, with knowledge that the person does not qualify as an inventor, can result in invalidity of the patent. Therefore, that person’s name must not be listed as an inventor on the patent.

Absent any contrary agreement or duty to assign the patent, the named inventor is the owner of the patent.

As the owner of the patent, the inventor has the right to prevent others from making, using, selling, offering to sell, or importing the patented invention.

If there are joint inventors, unless there is a contract, each of the inventors has an undivided interest in the entire invention as claimed in the patent.

Each of the joint inventors may practice the invention without consent of the other inventors and without any duty to pay the other inventors a portion of the profits from the exploitation of the patent. There is no fiduciary duty between the joint inventors.

Also, each joint inventor may license the patent without approval of the other inventors and without paying them a share of any royalties received from the licensee.

Because of this, in any situation involving more than one inventor, the inventors should agree by contract how the rights in the patent will be apportioned.

For example, the inventors may agree that all proceeds from licensing the invention will be split regardless of which inventor actually licenses the invention, or that each of the inventors will have separate exclusive rights to the patent in different geographical regions of the territory.

Often, inventors assign their inventions to their corporate or university employers. When this occurs, inventorship and ownership of the patent differs.

Here, the corporate or university assignee, and not the inventors themselves, owns the rights in the patent.

Unless there is an agreement requiring it, the assignee/owner does not have to make any payments to the assignor/inventor for exploiting the patent.

An obligation to assign a patent usually arises when there is a contract between the inventor and the assignee requiring an assignment, such as when a contractor is hired to solve a particular problem, or when certain employer/employee relationships exist.

Generally, an employee must assign an invention to an employer if the employee has a specific contractual obligation to assign or if the employee was hired to invent or is directed by the employer to solve a particular problem.

Although courts have divided on this issue, employees who have been hired to do research in general usually do not have to assign their inventions to their employers. Also, employees who have been hired for purposes other than to do research have no duty to assign their inventions to the employers.

Of course, parties may define their rights by contract. It is a good idea for companies and universities to have contracts in place with their researchers that require assignment of any invention discovered in the course of their employment.

European trademark law effective efficient
brand trademark, European Union Trademark Reforms, INTELLECTUAL PROPERTY STRATEGY, strategic business advice, trademark filling in India

European Union Trademark Reforms

How to reforms laws?

Reform the world is to reform the nation and reform the nation is to reform the laws.

The European Union trademark reform that has been introduced in order to bring a substantial and an important change to the original and unabridged EU trademark system that existed since 1996. The newly amended EU trademark law is referred to as the Regulation (EU) 2015/2424 which was passed in December 2015 and on March 23, 2016 the first part of its regulation came into force. On October 1, 2017 the remaining provisions will come into effect.

This change in the trademark law will bring an important change not only to the community trademarks that allows to obtain with a single application a trademark valid in all the territory of the European Union but also for national trademark owners in the European Union (EU).

Before dealing with what these reforms have in the bag for trademark owners in the EU, we first need to shed some light on the legislation that are behind the whole reform unit. There are two legislation namely, the amended Community Trademark Regulation (Regulation (EU) 2015/2424) which provides for the rules and regulations that are to be compelled with and which came into force on 23 March 2016. The second legislation is the new Trademarks Directive (Directive (EU) 2015/2436) intends to balance the national trademark systems of the EU member state and which came into force on 13th January 2016.

This reform consists of various innovations, including the alteration to the fee structure, criteria concerning the registration of trademarks and the procedural issue as well as alterations relevant to infringement proceedings and custom seizures. The new regulation is applicable to all the EUTM (European Union Trademark) registrations and as a result of this many trademark owners who have their trademark stipulation contain class headings from the nice specifications have to take actions in order to prevent a cutback in their protection.

According to Article 28 EUTMR class headings of the class specifications that are mentioned in the EU trademark specifications will only cover the goods and the services which are covered by the literal meaning of the respective words. Further the EUTMR has also proposed a new European Union certification mark in Article 74a-74k EUTMR and the applications for such marks can only be filled after 1st October 2017. Under this proposal the owner of an EU certification mark will not act as the supplier of the goods and services in the market but will be responsible for certifying and monitoring the qualities of goods of services.

Along with the innovations there are changes such as:

The Community Trademark (CTM) is renamed to the European Trademark (EUTM) and the office for Harmonization in the Internal Market (OHIM) has become the European Union Intellectual Property Office (EUIPO).

Trademark applicants have to no longer represent marks graphically. This change makes it easier for the non-traditional signs such as sound and smell to be registered easily.

The trademarks are followed by a new fee structure and the renewals have indeed become generously cheaper but the trademark applications which are containing 3 or more classes have increased. Further there are concerns that arose with these innovations and changes such as the grounds for refusal and invalidity of the trademark.

 VARIOUS GROUNDS OF EU REFORMS

Absolute grounds for Refusal or Invalidity: Signs which dwell completely of other characteristics of which results from the nature of the goods or is necessary in order to obtain a technical result or give a generous value to the goods, may not be registered. These absolute grounds cannot be affected on evidence of acquired uniqueness and has been drawn out to include ‘other characteristics’ apart from shape.Additional grounds such as designations of origin, geographical indications, and traditional terms for wine, traditional specialties guaranteed and plant varieties have been added for refusal.

Relative grounds for Refusal or Invalidity: The owner of a designation of origin or a geographical indication can depend upon these rights in order to prevent the registration and use of a consecutive trademarks.

Marks with a reputation: This ground has been introduced in order to prevent the registration of the trademark where the goods and services are same. This ground can be based upon a reputation claim, irrespective of the fact whether the goods and services concealed by the inimical applications are similar or dissimilar to the goods or services for which reputation is claimed and where such use would lead to an unfair advantage of or to the modesty of the earlier mark.

Infringement: Using a registered trademark as a trade or company name is a specific infringement.

At the end trademark reforms include some large-scale alterations that will definitely restore and modernize the European Union trademark law and will ensure greater balance in trademark practices and procedures across the European Union. It will strength the rights of the trademark owners while bringing a bright prospective towards the working of it.

IF YOUR STRATEGY AND DOCUMENTATION ARE IN PLACE WE GET”YOUR” TRADEMARK REGISTERED IN TWO- THREE WEEKS

Apply for TM Registration and discuss your brand strategy  and understand importance of brand, logo and tagline with expert consultants at Tech Corp International Strategist India TCIS, India.

Locations: Delhi, Gurgaon, Noida, Mumbai, Banglore

IF YOUR STRATEGY AND DOCUMENTATION ARE IN PLACE WE GET”YOUR” TRADEMARK REGISTERED IN TWO- THREE WEEKS

 We at Tech Corp International Strategist India(TCIS) provide Trademark services:

Trademark Office Action Responses

We at TCIS,India evaluate your office action after client discussion and understanding his business quotes and let you know if there is a fair chance to get your trademark application approved. If you decide to hire our trademark lawyers / trademark attorneys at TCIS to draft a response to the office action, cost effective flat rates are available.

As experienced trademark attorneys we at TCIS are well versed in responding to office action letters issued by trademark examining attorneys at the Indian Patent Office(IPO) and Indian Trademark Office.

Trademark Monitoring Services

We at TCIS,India also offers trademark monitoring services for OUR  clients. This service is designed to protect the client’s trademark by periodically reviewing the records of the Indian Patent Office(IPO) and Indian Trademark Office, and additional sources, depending on the monitoring service requested, for applications to register, or use of, confusingly similar marks.

Other Services

The firm offers a variety of services, including representation in cancellation and opposition proceedings at the Trademark Trial and Appeal Board. 

CALL NOW FOR YOUR FREE CONSULTATION WITH TRADEMARK ATTORNEY  at 011 6654 4992 OR SEND AN EMAIL TO legal_desk@patentbusinessidea.com

When you contact Trademark attorney at TCIS,India whether by phone or email, you can expect to receive prompt, professional, efficient and courteous service.

Clients of the firm enjoy the following:

  • Free initial trademark consultation with an experienced trademark attorney
  • Review of office actions by an experienced trademark attorney                
  • Trademark attorney personal attention to their matters                                        
  • Firm ideology of involvement that requires “going the extra mile”                      
  • Firm policy to return client phone calls and respond to emails immediately whenever practical                                                                                                  
  • Cost-effective flat rates 

OUR CLIENTS ARE LOCATED THROUGHOUT THE WORLD INDIA,UNITED STATES, AUSTRALIA, CANADA, CHINA, DENMARK, ECUADOR, HONG KONG, MALAYSIA, SINGAPORE, INDIA, ITALY, INDONESIA, SOUTH AFRICA, SOUTH KOREA, SWEDEN, FRANCE, SWITZERLAND,  U.A.E. ,  UK.  

Co Author

Food Strategy | Foodservice Design food culture strategy

Anshika Bhardwaj

Food Law Strategist, Patent Associate at Tech Corp International Strategist *Startup India Expert Tech Corp International Strategist *Startup India Expert

IF YOUR STRATEGY AND DOCUMENTATION ARE IN PLACE WE GET"YOUR" TRADEMARK REGISTERED IN TWO- THREE WEEKS