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Imagine you have spent years building a successful business, backed up by a strong patent protecting your core activities. Out of the blue, an old acquaintance claims they made and own the invention your business is based on, are entitled to the patent you have paid for, and want a share of your profits. That might sound like a ridiculous demand, but the law might just be on their side.
Determining the true, legal inventors of an invention is crucial for determining entitlement to resulting patents. The right to a patent starts with the inventors, and can only be transferred onwards from there (including by automatic transfer to an employer). Omitted inventors can use the courts to enforce their rights, which can lead to expensive and acrimonious disputes. Yet the question of inventorship is very easy to overlook when inventions are first made and patent applications are filed.
So who is the inventor? Legally, the inventor is the person – or people – who actually devised the inventive concept. But what does this really mean?
This is really a two-part question. First, what is the inventive concept (or concepts)? Second, who actually devised those concepts. (And then third, who owns the IP rights in them.)
The inventive concept is the new idea that has been added compared to what was known before. But it’s not just any new idea. It might be helpful to think of the inventive concept as a technical solution to some problem that existed in known systems. Think making a better mousetrap by improving the closing mechanism, not by painting it a new colour. The inventors are (or include) the people who came up with the solution.
There might be one clear inventive concept, often where the inventors set out to solve a particular problem and find a particular solution. But there may also be other inventive concepts that end up in the patent application, either whole separate inventions or smaller but beneficial refinements to the main concept. In a patent application these refinements will often appear as dependent claims, but they may only appear in the description. Each inventive concept might have a different set of inventors. It is important that all inventors of all inventive concepts included in the patent application are named in the application.
Once the inventive concepts are known, the inventors can be determined. This is a question of legal fact, not a matter of agreement between the parties. Ownership can be agreed, inventorship is what it is. Nor is inventorship a matter of courtesy or convention – it is not like an academic paper where a supervisor will always be named. Such thinking is in fact not only wrong in law but positively dangerous in that, in the USA, naming the wrong inventors can render a patent unenforceable. The consequences are much less severe elsewhere but most patent applicants do want strong protection in the USA so this is a key fact to understand.
The inventors are the people who actually came up with an inventive concept, the people who had the ‘light bulb moment’ (or one of them). Inventors might identify problems in existing technology, and/or come up with solutions to those problems. Inventors might recognise the significance of results and see how they can be beneficially applied. The inventors might take the creative leap that actually makes an idea work. There may be a team of inventors who together devise the inventive concept, or it may be one person.
People might contribute to an invention without actually being an inventor. Contributors might provide background knowledge or a sanity check to help the inventors, without actually generating the inventive concept. Contributors might run experiments to demonstrate the idea works, but do not help come up with or improve on the idea.
Contributors might generally carry out work under instruction, without taking any initiative themselves. A contributor might be a supervisor or manager who provides support but does not actually help devise the inventive concept, or a technician or student who carries out work under an inventor’s direction. However, it is also important to recognise that inventorship is not a matter of the role one holds but of what one does. If the technician or student solved practical problems that contributed to the making of the overall invention, they would become an inventor too.
Of course contributors may provide valuable assistance, and there is no reason they cannot be rewarded for their efforts. For example they could be awarded a share of any proceeds generated by the invention, by agreement with the inventors (or company, where an employer automatically owns an employee’s invention). But they are not inventors in law, and so do not have automatic rights in any patents for the invention.
This may all sound complicated, especially when discussed in the abstract. A patent professional often knows inventorship when they see it, and so will be able to help. But there are also some simple measures you can take to help keep track of who the inventors might be.
All scientists know the importance of keeping a good lab book, and it is no different for inventions. Keep a dated record of ideas you come up with, results verifying the ideas, and who else was involved. Remember that anyone who contributes an inventive spark or useful refinement might be an inventor, even if you only discuss it with them over coffee. So keep a record of any conversations that generate useful ideas. Conversely, if you contribute to someone else’s idea in a significant way, keep a dated record in case you need to protect your rights later on.
Once you do have a defined idea, even if you don’t think you are likely to pursue a patent, make a formal record of it. Invention disclosure forms are a handy way of doing this, as they help pull out the core improvements of your idea, which can be used to identify inventors, and they often also have a section specifically asking who did what. The sooner you complete this record, the easier it will be to correctly list all inventors. Your company may already have invention disclosures forms, or your usual J A Kemp attorney can provide one.
As with many aspects of patents, prevention is better than a cure. Getting the inventorship right at the outset can avoid costly disputes down the line. It can be a tricky legal judgement to make, but a discussion with a patent attorney can help.
Article by: Callum Docherty | 3 September 2021