Jill Gilbert Welytok is the managing attorney for Absolute Technology Law Group LLC, which is a team of Registered Patent, Trademark and Transactional attorneys.
Announcement: Inventors' Forum
Next Meeting: September 15, 2010 at 5:30PM
To be held at:
Marquette University High School
Room 127, Conference Center
3306 W. Michigan Street, Milwaukee
Topic: Launching and Protecting Your Product in a Global Marketplace
-Letters of Credit
-International Patent Protection
-Quality Control and Delivery
-Contract Enforcement Issues
For more information, please visit our website
Some of my clients are asking about adding the design professional to the patent application. There seems to be some confusion about the law this area. I am hearing this a lot.
If a design professional is involved in the mechanical design, this is not appropriate. The design professional can, however, receive an assignment of rights and royalties.
However, in the event that the design professional’s relationship with the client terminates, I am not at all comfortable from a legal standpoint that the design professional would continue to be listed as a co-inventor. Even if the relationship is amicable for the life of the patent, I do not believe this type of co-inventorship designation is valid in many cases.
Patent law contemplates infinite alternative designs for a product. Inventors need to have their inventions implemented from an engineering standpoint. The invention itself and concept of being protected is the concept for an apparatus for an unmet need, and theoretically, there are infinite designs. Design of one or more alternatives to render the apparatus functional generally does not result in co-inventor status.
Again, the assignment of royalties, revenue and licensing rights is probably the correct and effective legal alternative.
Another issue coming up is the use of non-disclosure agreements. These agreements are generally not used once a patent application is pending. However, if there is a quick provisional on file or something outside the scope of the application to be published, these agreements are a good idea. If in doubt, as to the scope of your patent protection, you can find a free non-disclosure agreement for at www.milwaukeepatents.com.