IP Intelligence › Real Scenarios › The consultant who still owned it
Real-life scenario · fictionalised
The consultant who still owned it
A software company engages a freelance machine-learning consultant for four months to solve a latency problem. She designs the approach that becomes the company's core technical claim. She is paid on invoice, with a two-page engagement letter that says nothing about intellectual property. Eighteen months later the company files a patent naming its CTO as sole inventor. During a Series A, the investor's counsel asks who devised the claimed method.
Who owns the invention, and who should have been named?
Two separate defects
Inventorship. The consultant devised the claimed subject matter. Naming the CTO alone is factually wrong, and inventorship is a question of fact, not of hierarchy or contract.
Ownership. Rights flow from inventors. In India an assignment of a patent or an application must be in writing, and must be recorded to be effective as evidence of title. Payment on invoice does not transfer patent rights, and an engagement letter silent on IP does not either.
What happens in the data room
Counsel asks for the assignment from each inventor. There is none from the consultant, who is no longer engaged and has no obligation to sign one. Her negotiating position at that moment is excellent.
The outcomes range from a delayed closing, to a payment, to an indemnity that sits on the founders, to a re-priced round. All of them are more expensive than the clause that was missing.
What should have happened
- Included a present assignment of inventions in the engagement letter, not a promise to assign later.
- Identified inventors from the technical record before filing, not from the org chart.
- Obtained and recorded a written assignment from every named inventor at filing.
- Revisited inventorship after the claims were amended during prosecution.
Paying someone to invent something is not the same as owning what they invented.
This scenario is a composite teaching example written by Ragulika IP. It does not describe any real client, application or matter, and any resemblance to a specific case is coincidental.
Sources & further reading
- The Patents Act, 1970 (consolidated to 1 August 2024) — Official IP India text
Related
Nobody wrote down who owns it
An invention belongs to its inventors unless something in writing moves it. Filing in the company's name does not by itself transfer anything. Ownership defects are …
The wrong people are named as inventors
Inventorship is not authorship, seniority or reward. It is a factual question about who devised the invention **as claimed** - and because claims change during prose…
Assignment
A transfer of ownership of a patent or an application from one person to another. In India it must be in writing, and it has to be recorded in the register to be eff…
Before a funding round or an acquisition
IP diligence rarely finds bad patents. It finds missing paperwork - and that is what delays closings and re-prices rounds.
Not sure whether this applies to your invention?
The honest answer usually needs someone to look at your actual disclosure, your timeline and the prior art. That is a conversation, not an article.
Educational guidance, not legal advice. This material is published by Ragulika IP for general education and information. It is not legal advice, it does not create a professional-client relationship, and it is not a substitute for advice on your own facts. Patentability, infringement, prosecution strategy and every other IP outcome turn on the specific facts and on the law and Patent Office practice as they stand at the time you act. Please take professional advice before making a decision, and read the underlying provision or judgment before relying on any point stated here.
Last reviewed by Ragulika IP on 2026-08-23. Indian patent law and Patent Office practice change; check the position before you rely on it.