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Ask the Expert: Am I the inventor?
A reader has an idea for a new product, and creates it with materials from two different companies. He doesn't work for either—is he the inventor? Our expert weighs in.
By M. Henry Heines, Townsend and Townsend and Crew LLP -- Electronic Business, 7/17/2007
Question: I have an idea for a new product. I take material from company A and give the material to company B to refine the material, and then give it back to company A to make a final product. Do I have any claim to intellectual property on my idea? I do not work for Company A or B.
Expert response from M. Henry Heines, partner, Townsend and Townsend and Crew LLP:
You will have a claim to inventorship if you contribute a concept that ends up in the final product. You may in fact be the sole inventor.
A new use of a known material is a patentable concept. A new form of a known material for a previously known use or for a new use is also a patentable concept. A new marketing strategy by itself is not.
If the "refinement" that you are directing Company B to perform is something that you conceived and makes the material suitable for something that it was previously unsuitable for, this is a patentable concept as well.
Whatever the nature of your concept, protect yourself by making it clear that the concept is yours. Do this in writing (even e-mail will serve you in this regard) and direct it to both companies, but do this before you reveal the concept to either one. It would be best if you could get both of them to agree to keeping the concept confidential until a patent application has been filed or at least for a specified period of time. Be aware, however, that if you are merely a co-inventor and one of the companies claims co-inventorship as well, the company will be able to use the invention once it is patented without any obligation to you, either in terms of compensation or accounting.
