Patents, I.D. Work, compensation in contract??


Is there any sort of patent award compensation in a standard product design contract for consultants?

I’ve never asked for one but a number of clients have volunteered them, like I was an employee. I’m currently working with a startup which will probably result in a number of patents (my Ideas). I wonder if I should add a clause?

Regards, Croak

99% chance your clients will be the ones paying for your patents

meaning, they invented the patents, they own them, you get no credit

financial reimbursement clause… sounds like a great idea to start talking about with them right now, and sign a contract before you’ve given away all of your patent ideas. I would suggest a one time fee for each patent you provide to them. you won’t be able to get royalties based off of a patentable feature for a product. by “wont” I mean, chances aren’t in your favor.

Actually, if you, as a designer, contribute enough to the invention’s patentability, you, by law, should be listed as one of the inventors on the patent. This does not mean that you control the rights to the patent, but simply that you worked on the invention. If you thought up ideas that made the invention new and useful enough to patent, your name should be on the patent. However, if you simply flesh-out exactly what they give and do no development whatsoever, you will have no reason to be credited in the patent as an inventor. Being listed as an inventor and being listed as the patent holder are two different things. Being listed as an inventor is an acknowledgment that you worked on the project. The patent holder owns the rights to the patent. Sometimes the inventor is the patent holder, but often if you are working for a company, for example, someone else holds the rights to the patent. You can also sign paperwork stating that even though you may be doing a great deal of the actual “inventing” your clients actually own the work you do. I know a couple of designers who do just that. The design work pays the bills, so no need for fighting for patent rights that may or may not make any money anyway.

Mandatory disclaimer-
I am not a lawyer. Do not try to use this advice without actually talking to a lawyer first.

All those who contribute to the claims in the patent are to be listed as inventors. If there are more than 1 person then all would be Co-Inventors. Ownership of the patent depends on who the patent is “assigned” to. There may be an assignment of the patent to the client. If so, the client owns the patent and is the only one who can sell products based on, use, or license it for profit.

If you are selling the invention for royalty make sure you get a Conditional Assignment where the recording at the patent office states that the patent is assigned to the client on the condition of the royalty agreement. The royalty agreement is a separate licensing agreement that needs to be mentioned in the patent assignment. Ideally, do not assign it but offer exclusive rights, this way you won’t have to pull the patent if they are rotten turds who don’t pay you.

Thanks All,

O.K. So it’s not a part of a normal I. D. contract. I’m fine with that. Were I to ask for it, I would have wanted to be able say it was standard practice. There will be quite a few patentable features developed in large part by me, I just didn’t want to make professional blunder. I didn’t feel like broaching the subject anyway.

I’ll make sure I am and“inventor” on any patent and leave it at that.(BTW; is “inventor” status worth a spit anywhere to anyone)

Regards, Kroak