What is the difference between a patent owner and an inventor?
In very shord words, what would you tell a client about that difference and where does it play a role in practice?
Owning a patent is different than being an inventor.
An owner doesn’t have to be an inventor, but an inventor can be an owner. Owning a patent allows the owner to enjoy the value of the patent and to prevent others from infringing. Ownership is acquired from the inventors, typically through an assignment of their rights. An assignment is a legal document transferring the rights of the inventors (assignors) to the owner (assignee). In some countries, this assignment is stipulated in the law and automatic, in other countries it is not.
Initially, all persons who are entitled to a patent own equal rights to the patent, no matter what they contributed. This means that each inventor can possibly do what they want with the patent. They can sell it, license it, make and sell the product or process covered by the invention, all without the permission of any other inventor. They can also frustrate any lawsuits since all owners have to be joined in a lawsuit.
To prevent each inventor from doing what they want, the rights are usually assigned to a single person or entity. Once assigned, that person or entity owns all rights.
However, even with an assignment, if you missed an inventor, you may find that someone else owns the same rights that you own in the patent. Each inventor owns a pro-rata undivided interest in the entire patent, no matter their respective contributions. A joint inventor of just one claim enjoys a presumption of ownership of the entire patent. So, an inventor of just one dependent claim can own the patent equally to the inventor of 99% of the patent.
Naming the correct inventors is critical for U.S. patents: all inventors must be properly named. Deciding who is an inventor is a complicated task and great care must be taken to not add or omit people who are not inventors. It is possible that failure to properly name the inventors could result in losing your patent or its value.
You can correct the inventors. This can be done by the United States Patent and Trademark Office (USPTO) or by court order. The USPTO requires a petition stating that it was an error and all the parties and assignees must make the application, agreeing it should be corrected. If all parties don’t agree, the assignee can file a request for reissue of the patent naming the correct inventors. A court can also order the USPTO to make the correction. If the inventors can be corrected, the error won’t invalidate the patent. If it cannot be corrected, the patent is lost.
Having the wrong inventors often arises when the patent becomes valuable—when the product or process is successful and those involved feel they’ve been wrongly excluded and want to be included.
Example "Ethicon-Situation": In 1989, Ethicon, a manufacturer of surgical instruments, filed a patent infringement suit against a competitor, United States Surgical, over U.S. Patent No. 4,535,773. The inventor named on the patent was Dr. Inbae Yoon. Yoon granted Ethicon an exclusive license to practice his invention. The patent had 55 claims but only two claims were asserted against U.S. Surgical: claims 34 and 50. During the lawsuit, U.S. Surgical learned of a co-inventor named Young Jae Choi. Choi was an electronics technician who collaborated with Dr. Yoon for 18 months. US Surgical asked the court to add Choi as an inventor. The court agreed finding that Choi had co-invented claims 33 and 47. Two claims that were not even involved in the lawsuit. The court found that there was corroborating evidence that supported Choi’s assertions that he was an inventor. The evidence was dated notes and drawings that Choi had along with his technical abilities as an electronics technician. The court dismissed Ethicon’s lawsuit because Choi had granted U.S. Surgical a retroactive license to the patent.