I recently had the pleasure of interviewing Leo Mazur, an individual who has been involved with inventor’s community for a long time. He has taken leadership roles in inventor’s groups in both New Jersey and Florida. What are some of the most frequent problems he’s seen plague inventors?
“At an exposition in South Florida recently, I received several phone calls from inventors outside of the event. They were each concerned about the same problem. Their problem can result any time you use anyone to help bring your product to reality, such as hiring an engineer or professional prototyper,” Mazur explained.
What most inventors don’t realize is, if you do not explicitly create an assignment clause in your “work-for-hire” agreement, this person now shares in the ownership of your idea. They become the “co-inventor” of the product – and without a clause, they own as much of the project as you do! It’s startling. You may think you’re simply paying someone $10,000 to make you a prototype, and suddenly you’re one of two primary inventors.
What’s the solution?
“You must include an assignment clause in your work-for-hire agreement. I know an individual who hired a patent attorney to help them file for protection and who recommended an individual to help make their prototype. After having made the prototype, the patent attorney informed their client that this individual was now the co-inventor. The attorney said that he assumed the inventor would have asked to include an assignment clause if he wanted one,” Mazur shared.
This is obviously a shady activity. The patent attorney should have informed their client about the assignment clause and really, included it from the beginning. But the story illustrates Mazur’s greatest advice.
“Inventors must self-educate! The inventor HAS to know everything that should be included in agreement before they make one. They must do the research! Not anyone else.”
Stephen Key is a successful award-winning inventor who has licensed
over 20 products in the past 25 years. Along with business partner
Andrew Krauss, Stephen runs inventRight, a company dedicated to educating inventors about selling their ideas and the skills needed to succeed. You can ask questions and get advice on the inventRight forum, check out the resource center, and listen to the weekly radio show on inventing. Get In The News, list your invention to have media outlets find you for news stories.