Patents only granted to the inventor of the invention. Thus all patents, at least initially, are owned by the inventor. That does not mean that the ownership cannot be transferred before, during or after prosecution and issuance of the patent, as will be seen below.
Scope of Work Inventions
Many occupations require an employee to create new and useful devices in the scope of the employment. Academic and corporate researchers often come upon a problem to which there is no known solution. In order to resolve the problem, or circumvent it, these employees will invent a device, procedure or composition of matter that allows them to proceed to the next problem. Many of these solutions are patentable.
Researchers are not the only people who come upon a problem that has no known, or easy solution. Business people also need to invent devices to ease their work load. This is especially true when the face of business changes rapidly, such as we see currently.
These inventions created in the scope of employment are owned, at least initially, by the inventor. Major corporations frequently require the employee to assign all inventions to the corporation as a condition of employment. On the other hand, most corporations are not draconian about the assignment of inventions. Employee inventors who want to commercialize their inventions can go to the corporation and request an assignment back to them. If the invention is not related to the industry in which the corporation does business, or intends to do business, then the corportation will often release the employee from the requirement to assign that particular invention.
An assignment is basically the sale of all rights to the invention. Since patent rights granted by the United States are independent of those granted by foreign countries, an inventor may assign the U.S. patent rights seperately from foreign patent rights.
Assignments are contracts and as such should be signed, dated, and preferably notarized. Since the rights afforded by patent law are the rights to make, use or sell an invention, an assignment must be the sale of all of those rights. Anything less is considered a license. All assignments should be filed with the United States Patent and Trademark Office.
A license is the right to make, use or sell an invention without being sued by the patent owner. A license does not transfer any legal title in the licensed invention. Licenses are a way to maximize the economic value of an invention. License can be exclusive or non-exclusive. An exclusive license is where the licensee is the only person who has been granted the particular right. A non-exclusive is where the licensee is one of several who have been granted the particular right.
Licenses do not have to be granted strictly on a basis of exclusive rights. An owner of an invention may grant geographical rights, such as the right to sell in a particular state, or country. The owner may grant the right to manufacture to one company, and the right to market to another. There are many ways to divide and allocate patent rights, each depending upon the invention in question and the marketplace surrounding the field of the invention.