Who Can Apply for a Patent on a New Invention?

Any inventor or assignee of an invention can be the patent applicant and apply to seek patent protection for the invention. An assignee of an invention can be any person or juridic entity such as a business or partnership. Therefore, any person or business that owns the invention can apply to seek patent protection for the invention. In the United States (U.S.), there are some representation requirements for non-U.S. citizens and for businesses and some other juridic entities: 

  • In the U.S., any U.S. citizen can file an application for a patent for their invention. In fact, U.S. citizens can write, file, and prosecute their own patent applications. 
  • For non-U.S. citizens and for businesses from any country, a licensed patent practitioner is required to file and prosecute a patent application to represent the invention before the United States Patent and Trademark Office (USPTO). 

If the patent applicant for an invention is not the inventor, the full name and details of the inventor or co-inventors must be disclosed. Importantly, when the inventor is not the applicant, an oath or declaration by the inventor that it is/was their invention is required. Additionally, the inventor may be needed during patent prosecution to address any objections or rejections from the USPTO examiner.

Inventors and Co-Inventors can be the Patent Applicant

The inventor or co-inventors can be the patent applicant and apply for a patent for a new invention. In the United States (U.S.), and many other countries and regions, the only limitation on who the inventor can be is that the inventor must be a human. Any human can be an inventor. Often overlooked, inventors can be minors and those with disabilities. Carson Patents is able to help write, file, and prosecute a patent application to the USPTO for any human we can effectively communicate with who has an invention.

What if There is More than One Inventor?

Be sure all persons listed as co-inventors actually co-invented at least one element of at least one claim in the patent application. Any person listed as an inventor has the right to represent themselves (if a U.S. citizen) or retain the services of any licensed patent attorney or patent agent to represent their interests in a patent application or patent. Co-inventors generally all use the same patent practitioner, but where there are co-inventors of an invention, there can be multiple licensed patent practitioners representing the different inventors.

When there are co-inventors, all co-inventors own equal rights to the patent application and any patent that may issue therefrom. Generally, each co-inventor may assign their interest in the invention without regard to what any other inventor does with their interest.

Important Note: In the case where there are co-inventors, typically all inventors work with a single patent practitioner to represent the invention to the USPTO for all of the inventors. Each inventor may represent themselves or retain the services of a patent practitioner to represent their interests in the patent application.

Be Sure There Really are Co-Inventors

Co-inventors happen when two or more people each make inventive contributions to the invention. Only the inventor is the inventor. Sometimes inventors see the designers and engineers who build the prototypes or those who actually make the invention as co-inventors. As a general rule, the engineers and others who help inventors make their creations are not co-inventors. Rather, the engineer is only helping reduce the invention to practice. However, it is fairly common for engineers and others who are building the invention to add new inventive elements and or new embodiments (different versions) of inventions and become co-inventors of an even better invention.

Be sure to know and appreciate each co-inventor’s contribution. Be sure to list all inventors for any patent application. And, most importantly, be sure that all co-inventors actually co-invented. Listing someone as co-inventor or co-applicant will confer legal rights if a patent issues from the patent application. More often than perhaps expected, people listed as co-inventors are actually not co-inventors, but rather they were the people who enabled the reduction to practice.

If a person’s contribution was only to help make the invention into an actual product or process, and not to create its elements or add new or alternate embodiments, then it is likely this person is not a co-inventor. Remember, listing someone as a patent applicant will confer legal rights if a patent issues therefrom. Be sure all listed co-inventors are actually co-inventors and not reduction to practice contributors. Read more about reduction to practice.

Being First Named Inventor – Why it Might Matter

When there is more than one inventor, someone among the patent applicants must be the first named inventor. This matters because of the way inventor information is listed on patent applications and patents. Inventors are listed in the patent application in the order chosen by the co-inventors. Only the first named inventor is used for communications about the application or patent. It can appear that only the first named inventor is the patent applicant. The inventors will be listed using the last name of the first inventor followed by the phrase “et al.” to include a reference to all other inventors. The English translation of the Latin phrase “et al.” (abbreviation of et alia) is “and others.”

Basically, if you want to see your name listed on the top of a patent application or patent, or in reference to a patent application or patent, you need to be the first named inventor among the patent applicants listed on the application. This is because unless you are the first named inventor, your name will not be listed on a patent application summary or in references to the patent application. All inventors that are not named first are included in the “et al.” and are listed on the patent application on the first page of any patent that issues therefrom.

Assignees of Inventions can be the Applicant to File a Patent

The assignee of an invention can apply for a patent for a new invention. The inventor is the creator of the invention and owns the invention unless and until the inventor assigns any or all of their interest in the patent application or patent to another person or juridic entity. Assigning any or all of the interest in a patent application or patent for an invention permits the assignee to act in their own interest with respect to the patent application. 

For example, an inventor assigns a partial interest of 10% to the engineer that helped them reduce the invention to practice. As assignee, the engineer could hire a patent practitioner different than the one the inventor hires to look after their interests in the patent application. 

Important Tip: If the patent applicant for an invention is not the inventor, the full name and details of the inventor or co-inventors must be disclosed. When the inventor is not the applicant, an oath or declaration by the inventor that it is/was their invention is required. Additionally, the inventor may be needed during patent prosecution to address any objections or rejections from the USPTO examiner.

Carson Patents is able to help write, file, and prosecute a patent application at the USPTO for any person or business we can effectively communicate with who has an invention. However, we do not have an obligation to represent any invention, and we do not generally accept inventions that are similar or compete with any of the inventions we currently represent.

Who Should be the Party to File a Patent Application?

We believe that the inventor or co-inventors should be the patent applicant unless there is an obligation to assign the invention. The inventor, in our opinion, should be the applicant when filing a patent application to keep control. By default, the inventor owns the invention and any patents that issue from their patent applications. The inventor remains in control as patent applicant. We recommend the inventor remain the patent applicant if at all possible. We recommend this practice so as to not dilute inventor ownership of any patent that may issue from a patent application, and because then we get to work directly with the inventors.

The inventor or co-inventors own the invention unless there is an obligation to assign or unless they assign their interest in the patent application to another person or business. If the inventor or co-inventors are under an obligation to assign the invention to their employer or to another under a development agreement, the employer or partners own the invention and its patent application. Provided the inventor does not have an obligation to assign an invention to their employer or other business entity, the inventor or co-inventors own all of the interest in the patent application and any patent that may issue from the patent application. 

Important Tip: It does not generally matter who pays for patent application services or patent application fees. The inventor remains the owner whether a business, partnership, or other person pays for the services or fees needed to seek patent protection. 

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