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Who Owns It, and Who Invented It?

The short version

Ownership and inventorship are two different questions, and confusing them is how patents get lost. Ownership asks who holds title, and it turns on contracts. Inventorship asks whose contribution made the invention, and it turns on facts about who did what. An assignment fixes the first. It does nothing for the second.

Four decisions mark the boundaries. Each is read from the opinion itself, with quotations checked against the court's own text.

Most of what goes wrong here goes wrong long before anyone talks to a lawyer. A contractor helps debug a subsystem. A professor's university has a bylaw nobody read. A model suggests an approach and a person builds on it. None of those feel like legal events at the time, and all three have destroyed or nearly destroyed patents.

That is why this cluster sits on an engineering site rather than a law firm's. These mistakes happen inside engineering and business workflows, which means the people best positioned to prevent them are the people writing the code and signing the vendor agreements.

The distinction in one line. If the wrong company holds the patent, that is an ownership problem and contracts caused it. If the patent names the wrong people, that is an inventorship problem and no contract fixes it. Omni MedSci is about the first. Fortress Iron is about the second. Thaler is about who is eligible to be named at all. Minerva is about what you gave up when you signed the assignment.

The Four Decisions

Omni MedSci v. Apple A university bylaw said inventions "shall be the property of the University." The Federal Circuit held that transferred nothing, over a dissent. The ownership half of the picture. Read the Case Fortress Iron v. Digger Two supplier engineers were coinventors and were not named. One could be added later; the other could not be found. Both patents were held invalid. Read the Case Thaler v. Vidal An AI system cannot be listed as an inventor, because the Patent Act says inventors are individuals. The court expressly did not decide whether AI-assisted inventions are patentable. Read the Case Minerva v. Hologic The rule reaches only as far as what the inventor actually represented. The Court described three situations involving no contradiction, starting with the ordinary employment agreement. Read the Case

What Ties Them Together

A promise to assign is not an assignment. In Omni MedSci, a university bylaw said inventions "shall be the property of the University." The Federal Circuit held that language transferred nothing. It was a statement of intent about the future, not a present transfer, so the inventor still had title to give. The court read the bylaw as a whole rather than resting on any single phrase.

Naming the wrong inventors can end the patent. In Fortress Iron, two supplier engineers were coinventors and were not named. One could be added later. The other could not be located, and because an omitted coinventor must receive notice before a court corrects inventorship, the patents could not be fixed. A patent that names the wrong inventors and cannot be corrected is invalid. Two patents, gone.

An inventor must be a human being. In Thaler, the Federal Circuit held that the Patent Act's word "individuals" means human beings, so an AI system cannot be listed as an inventor. It decided that and nothing more, and said so explicitly.

Assigning a patent can limit what you may later argue about it. In Minerva, the Supreme Court kept assignor estoppel but tied it to contradiction, so it reaches only as far as what the inventor actually represented in assigning. This is the case that matters when a founder leaves and competes, and it sits here rather than under filing deadlines because the operative document is the assignment.

The trap worth naming. The instinctive response to Fortress Iron is "make everyone sign an assignment." That is the wrong lesson. Assignment addresses ownership. Fortress Iron lost its patents on inventorship. A team that responds to this case by tightening its assignment paperwork has protected itself against a different problem than the one in the opinion.

What These Pages Do Not Decide

These are descriptions of what courts held. They are not advice about any particular agreement, contributor, or application.

  • Whether a specific agreement transfers a specific invention is contract interpretation, governed by state law that varies, and it belongs to a lawyer reading the actual document.
  • Whether a specific contractor, vendor, or reviewer is a coinventor is a legal determination made on the facts and the claims. It is one of the determinations where being wrong costs the whole patent.
  • Whether an invention made with AI assistance is patentable is an open question. Thaler expressly did not decide it.

Educational, not legal advice. Every quotation on these pages is verified against the court's own opinion, but a holding is not a rule about your facts. Consult a qualified patent attorney about your specific agreements, contributors and applications.

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