The originator and the applicant of the patent: What is the difference between them and to whom does your invention belong?
The originator and the applicant for a patent or utility model do not have to be the same person. In practice, these terms are often confused, but their meaning is different.
The originator is a natural person, which created an invention or technical solution by its own creative activity.
Applicant is a person (natural or legal) who files a patent application or utility model application and has property rights. It can be the originator who created the solution, but also the company that acquired the right to the solution from the originator.
Why is the correct distinction between originator and applicant key?
Incorrect or inadequate setting of legal relations between the originator and the applicant very often leads to Expensive Legal Disputeabout who actually owns the right to the invention and who is entitled to file a patent application.
Risks from practice: When development takes place without contracts
In practice, it happens that several people work on the development of a technical solution (both internal and external) in different modes; some even without a contract. The result? The unclear ownership of the results that arose during the development, when the company does not have the right to file an application for a patent and utility model and thus claim protection only for itself. In border situations, there are potential disputes about authorship or the right to file an application.
Attention to the fundamental difference: External collaborators and employees
The legal regime for acquiring rights to an invention differs fundamentally depending on who provides the development for you.
External developers, contractors and suppliers (B2B, self-employed)
With external collaborators, there is no legal transfer of rights, therefore the right to resolve and submit an application remains in full to the external developer as a natural person. If you want to act as an applicant as a company, you must have a contract with each external collaborator with an express transfer of the rights to the outputs created.
Internal staff (TTP, agreements)
In contrast, for employees in a permanent employment relationship, there is a special legal regime of the so-called employee invention. In this case, the perpetrator remains the employee, but the right to submit an application belongs to the employer by default. However, this legal regime is an exception linked exclusively to the employment relationship and cannot be applied to any external collaborator or contractor.
IP due diligence and investors: Why are 'red flag' rights transfers missing?
Investors tend to be particularly sensitive to the lack of arrangement of relations between intermediaries and applicants.
Within IP Due Diligenceit is examined not only whether the company has the applications filed or the rights granted, but also whether it can demonstrate that it has actually acquired the rights to them from all the natural persons who participated in the development.
Missing contracts, unclear transfers of rights or open issues of origination can be a significant red flag. In practice, they can lead to a reduction in valuation, postponement of the investment, the requirement for additional declarations andgoods, or, in the worst case, the termination of the transaction.
The golden rule of IP protection: Resolve contracts before submitting an application
Contract your relationship with developers, contractors and collaborators before filing a patent application. After all, retrofitting the links can be expensive or impossible.
For technical solutions, it is not enough to have a good idea. It is also necessary to be able to prove who created it and who has the exclusive right to protect it.