Does a patent belong to you if you do the research?

2

I am working at a company as a Data Scientist.

I am doing research in AI. Basically I am given instructions like: make a benchmark of these technologies. Instructions are not specific. It is me who does the research and then show the results. I know those are used to claim a patent.

My question is: should I be part of the patent? Anyway it is me who is doing the work. How should I proceed if it is the case?

Thank you

Aizzaac

Posted 2020-11-11T14:51:16.807

Reputation: 123

Answers

2

You ask about ownership, but really there are two questions. Who is the patent's owner and who are the patent's inventors. Inventors are very often not the owners. When you work for a company, the normal situation is that the company owns the results of your labor and thus owns the patent. For instance a person working on an automobile assembly line doesn't own the car being assembled just because they did the work. The same for intellectual property. I am listed as an inventor on many patents, but I'm not the owner of any of them. Unless you have some odd provisions in your employment contract, you are almost assuredly not the patent's owner.

Inventorship is different. It depends on who had the actual idea of the invention. For instance say an engineer has a great idea for a new device. She asks a CAD designer to model the device and then has a machinist fabricate it. Lastly a technician spends many hours testing. In this case only the original engineer is the inventor despite the fact that the designer, machinist and technician spent much more time in its development. To be listed as an inventor you need to have made a conceptual contribution to something claimed in the patent. Now it may be that during your research you devised a new and novel technique that was captured the patent's claims. If so, you should be listed as one of the inventors. However just because you did the research demonstrating the invention works and those results were included in the patent doesn't make you an inventor.

Eric S

Posted 2020-11-11T14:51:16.807

Reputation: 7 963

1I understand this may not be a U.S. specific question. In the U.S. the criteria for inventorship is someone who made a conceptual contribution to something claimed. We do not have "inventive steps" but look at claims as a whole. – George White – 2020-11-11T18:23:35.450

1@GeorgeWhite Thank you as always for your insightful comment. I attempted to edit the answer per your suggestion. – Eric S – 2020-11-11T19:01:16.903

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If you contributed to conception of the ideas in any claims of the patent, you must be named as a (co-)inventor for a US patent to be valid. If you defined the problem but not the solution or if you implemented an inventive solution that somebody else specified then you must not be named.

If you feel that you should be named, you might want to gently and politely suggest that to your manager. If you can reach the attorney or agent who will or did file the patent application, you can mention it. They are ethically obligated to inquire and make sure that the correct inventors are named.

If you have evidence to prove that you should have been named as an inventor yet the company knowingly left you out, you have grounds to invalidate the patent later. If the company is licensing out the patent, you could approach the licensee. They might be happy to stop paying license fees for an invalid patent. However, doing so might make you quite unliked by some people.

Jonah Probell

Posted 2020-11-11T14:51:16.807

Reputation: 346

Thank you for the answer. – Aizzaac – 2020-11-23T20:23:28.533

I guess I cannot claim a patent if the contract that I signed says something like: that all my ideas/developpements belong to the company and that I have to give the rights of intellectual property??? – Aizzaac – 2020-11-23T20:42:49.593

1How employment contracts are interpreted and enforced can be different between states and countries. In some places, if your idea is far enough from the company's business, the company may not claim the rights. In some places, if you did the research outside of work hours and away from the employer's location then the company may not claim the rights. It seems likely that you will need to give the rights to the company, and you will probably remain on good terms if you do it willingly. If you want a more specific answer, you should probably ask a lawyer. – Jonah Probell – 2020-11-25T03:23:43.220