Experienced readers will understand that an invention assignment agreement can be obtained after the invention is made, such as when a patent application is filed. However, I can tell you from years of experience that it can be very difficult and expensive to obtain an assignment after the invention is made because the collaborator will likely perceive that he or she has the upper hand in this circumstance. At a minimum, it is typically much more expensive to obtain an assignment from an outside collaborator after the invention is made. I have had to do this several times in my years as a patent attorney. This extra work to obtain an assignment from an inventor not employed by a company often added several $1000’s to the cost of obtaining a patent.
Also, I have also seen that many times the patent attorney does not know that an outsider was involved in the invention and the joint inventor is left off the patent inadvertently. It then happens that inventorship must be corrected at a later date when the product covered by the patent is a blockbuster. In this case, the joint inventor (Dr. Smart in our example) may be inclined to assign her rights to the highest bidder. Unfortunately, the highest bidder may be your biggest competitor.
(Note that correction of joint inventorship after a patent attorney leaves off an out of the company inventor is a common way for defendants in patent lawsuits to make the case go away the defendant often will seek out possible joint inventors and obtain a license to practice the invention from the joint inventor–Dr. Smart in our example. The lawsuit goes away because if the patent lawsuit defendant has a license, they can practice the invention.)
You may assume that in preparing your agreement with Dr. Smart about payment and the like, your legal department will take care of making sure Acme Gizmo will own all rights to inventions from your Open Innovation project. However, I have seen that many otherwise sophisticated business attorneys do not understand that a collaboration agreement should require the collaborator to relinquish all rights in any inventions resulting from the collaboration and this agreement must be in place prior to start of the work. If the collaboration agreement does not include the provision, the damage is done, and it will be the work of the patent professionals to try to fix or mitigate the damage so that the company can own exclusive rights in any patents resulting from the collaboration.
As Open Innovation becomes more prevalent in industry, I expect that more innovation professionals will hear “horror stories” relating to joint inventorship, and hopefully more people will understand how easy it is to avoid making this mistake. In the meantime, at least the readers of this blog post will be aware of this legal pitfall in Open Innovation.