VOICES FROM THE INDUSTRY: Determining inventorship can present a challenge

July 10, 2006

When you think of inventors, images of Thomas Edison or Benjamin Franklin might pop to mind. In most cases, however, patentable innovations aren't produced by gray-haired men in their workshops.

The reality in the business world is that most inventions are produced by large mia wherein the authors of an article can sometimes all end up as inventors. Performing shop work or running tests to obtain data might be sufficient to qualify as an author of a journal article. Inventorship, however, is a different standard.

Second, when working with other companies (suppliers, customers, etc), consider insulating your company future problems. This might include:

getting everyone to agree prior to the filing of the application that the named inventors are correct;

tailoring the claims to avoid claiming elements (even though such elements teams that work on various aspects of a product for which patent protection is sought. Determining inventorship is difficult when memories are fresh, let alone at the end of lengthy product-development cycles. Memories fade, and the membership of the team may change considerably from start to finish.

After concluding that the standard for patentability is met, companies must determine the correct inventors for a patent application. Congress has alleviated the rigid framework of the past in which naming incorrect inventors often resulted in the unjust result of invalidity.

The statutory scheme is now more cognizant of the business realities of product development. Statutes have been enacted and/or revised, defining inventorship in the negative and providing mechanisms to correct inventorship. Congress has also removed various barriers corporations previously encountered in seeking patent protection on improvements.

So how can your company avoid accusations of failing to name the correct inventors? Courts find this question challenging since the "exact parameters of what constitutes joint inventorship are quite difficult to define. It is one of the muddiest concepts in the muddy metaphysics of the patent law."

Joint inventorship is defined in the negative, and one may qualify as a joint inventor even absent certain circumstances. Courts set no lower limits to qualifying as an inventor, except to require "a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention."

An issued patent's presumption of validity also extends to the inventorship determination. Judges are reluctant to secondguess inventorship determinations made in issued patents.

While inventorship determinations remain challenging in certain circumstances, companies have some discretion in choosing inventors. Moreover, if that discretionary decision is later adjudged incorrect, the error is likely to be a mere technical defect that may be corrected. To avoid the need to make such corrections, however, keep in mind the following.

First, membership on a development team does not automatically make one an inventor. Inventors must contribute to the conception of the claimed invention. Examine the proposed claims in the patent application and insure each named inventor can point to some element in at least one claim for which that person contributed to conception.

This often proves problematic in acade might need to be disclosed in the application) that might have been contributed by someone from outside your company

getting agreements in place ahead of time requiring assignment of any intellectual property that results from any collaborative efforts.

The Courts may still impose the draconian punishment of invalidity for incorrect inventorship. Such situations, however, will generally be limited to those cases where inventorship may not be corrected. This will primarily occur when the addition or omission of an inventor was done deliberately with an intent to deceive (as perhaps might be the case in attempts to receive an undeserved priority date, otherwise avoid prior art, or to cheat someone of their proper ownership interest).

Absent such circumstances, however, good-faith but mistaken efforts to determine the correct inventorship will likely continue to be treated with kid gloves by the courts. However, inventorship is more cheaply corrected at the patent office rather than in court.

Usher is a patent attorney at Indianapolis-based law firm Bose McKinney & Evans LLP.Views expressed here are the writer's.
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