Correct Determination of Inventors Protects a Lab's Intellectual Property and Financial Interests
Whose invention is it? Correctly answering this question is critical to the validity of your organization’s patents.1 “Inventorship issues dominate the landscape in patent prosecution and litigation, especially worldwide,” 2 says Sandra P. Thompson of the Buchalter Nemer law firm. When it comes to correctly listing inventors, “dot your i’s and cross your t’s or you could be heading to (patent) invalidity,” she advises.
“Failure to recognize a purported inventor (or giving inventorship credit where it doesn’t belong) can lead to acrimony, hostility, loss of financial rewards, patent invalidity or a lawsuit,” notes Bradley Crawford of the law firm McDonnell Boehnen Hulbert & Berghoff LLP.3 This author has personally observed all these problems except the last one.
Inventors, their legal representatives and their employers are legally required to supply correct information to the U.S. Patent and Trademark Office (PTO) when applying for a patent. Failure, either knowingly or unknowingly, to do this constitutes what patent attorneys call “inequitable conduct.” One form of inequitable conduct is incorrect listing of inventors in the patent application and issued patent. This incorrect listing can be due to omission of an inventor or inclusion of individuals who are not inventors as defined by the PTO (see below). The issue of inequitable conduct often arises when a firm defends itself against a charge of patent infringement by claiming inequitable conduct on the part of the patent holder. This can result in a court declaring an issued patent unenforceable.
Laboratory managers and team leaders heading a project, because of their knowledge of how research on a project unfolds, often play critical roles in deciding inventorship issues. Correct inventorship has to be considered whenever one or more of your staff members submit an invention disclosure to be considered for filing as a patent application.
Determining inventorship requires collecting details of each project member’s contribution to the conception of the invention.4 This in turn requires the careful keeping of lab records. When lab members think they have conceived an invention, they should describe their idea in their laboratory notebook and have their entry signed and witnessed by a colleague. Preferably, this colleague is one who is knowledgeable enough to understand what is written but not one who might become a co-inventor. As the invention is reduced to practice and the inventive concept evolves, the same careful record keeping is needed.
Because of their role in supervising the progress of their staff members’ research, lab managers also can play an important role in this process. Therefore, lab managers need to understand the legal requirements of inventorship (see below). Disagreement over inventorship issues can affect morale among all members of a workgroup, not just the disputants. Disagreements often arise when people collaborate on a project resulting in an invention. Since researchers increasingly work together on teams, the potential for disagreements over inventorship is increasing. Another concern is that technicians in many laboratories are working with increasing independence and more and more of them may qualify as co-inventors.
Determining inventorship is often fraught with peril because everyone working on a project desires to be recognized as an inventor if patent applications are filed. If your staff members lack a clear understanding of the qualifications for inventorship required by the PTO, some can feel unfairly treated if they aren’t included among the inventors. Crawford notes that being listed as a coauthor of a research paper, trade journal paper or internal laboratory report does not automatically qualify someone to be recognized as an inventor.3 This author has personally observed resentments between researchers that persisted for more than a decade because one or more thought they deserved to have been listed as inventors of issued patents. These disagreements persisted because the noninventors based their arguments on rules of authorship rather than on PTO inventorship requirements.
So what are the PTO requirements for one to be listed as an inventor on a patent application and issued patent?
Definition of inventorship
“Determining inventorship involves collecting the facts of researchers’ contributions to conception and applying defined legal standards,” explains Jay M. Brown of The Eclipse Group LLP law firm.4 As noted above, this requires careful keeping of laboratory records as a matter of standard procedure.
Resolving inventorship issues begins with consideration of the Patent Act of 1952. Relevant sections read as follows:
- “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of [the Patent Laws].” 35 U.S.C. § 101. To be an inventor or co-inventor, a person has to have made an original conceptual contribution to at least one of the claims of the patent.
- “When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” 35 U.S.C. § 116.
Joint inventorship is “one of the murkiest concepts in the muddy metaphysics of patent law.”A good summary of joint inventorship law is provided in Reference 7. Each joint inventor must generally contribute to the conception of the invention. Each inventor is not required to make an equal contribution to the invention. For example, if a patent application has 20 claims, a person need only be involved in the original conception of one claim to be considered an inventor.7
When staff members work together to write an invention disclosure, they need to be aware that any inventorship decisions are tentative at this point. The patent attorney, after collecting information from various documents and in consultation with the authors of the invention disclosure and possibly with the lab manager, makes the final decision regarding who is an inventor. “Because inventorship is claim dependent, it can change during prosecution of an application when a claim is amended, added or cancelled, requiring the list of named inventors to be adjusted,” notes Kassim Ferris of law firm Stoel Rives LLP.8
An inventor has to contribute to the conception of at least one claim. If all an individual does is use his or her ordinary skills to assist an inventor after that person has conceived the invention, this person does not qualify as an inventor. This is the prime reason that even a technician who plays a key role in a project may not qualify as an inventor.
Errors in listing inventors
“When an error in inventorship occurs, the good faith intent of those involved is critical,” says Brown.4 What can you do if your firm has supplied incorrect inventorship information to the PTO? According to Thomas Irving of the law firm Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, promptly filing the appropriate documents with the PTO to correct the improper listing of inventorship can enable a firm to avoid inequitable conduct.9 Delaying filing of these documents after learning of incorrect inventorship can result in the loss of a U.S. patent.
This author has personally witnessed two cases of inequitable conduct. The first case occurred more than eight years after a young chemist left his first employer. He was ignorant of the requirements and procedures for filing invention disclosures. After he left the firm, his former mentor filed an invention disclosure that listed only the mentor as an inventor. After the U.S. patent had been issued, the patent owner filed a patent infringement suit against another firm. In examining documents associated with the case, the court decided that the young chemist should have been the sole inventor. The court invalidated the patent, leaving the alleged patent infringer free to continue the actions that had originally resulted in the lawsuit.
This author observed a second case, with a happier ending, while serving as technical advisor to the patent department of another former employer. The former employer had been first to file a patent application, but issuance of the patent was delayed by lengthy office actions. During these delays, a competitor obtained a patent on the invention. Once the patent was issued, this author’s former employer filed an infringement case claiming the patent was invalid because the former employer had been first to file a patent application. While assembling documents and reviewing lab books relevant to the case, this author became aware that a chemist not listed as an inventor had actually invented the technology used in some of the claims and reduced it to practice. At the same time, there was no documentation to support listing another chemist as one of the inventors.
After being informed of the situation, the patent attorney speedily filed the appropriate documents with the PTO and the inventorship on the patent application was corrected. Because the former employer had first acted in good faith and then quickly corrected the situation, the opposing party could not raise the inequitable conduct issue. The outcome? The issued patent was declared invalid and the former employer was later awarded a U.S. patent worth millions of dollars in business.
The academic lab perspective
Issues associated with correctly identifying and naming inventors also can occur in university and government laboratories. According to Sean Seymore of Washington & Lee University, “The rise in mentee claims for sole or joint inventorship, as well as the ever-present threat of an inequitable conduct defense in a patent infringement suit, jeopardizes the ability of the university to generate royalties from licensing agreements.”10 (Mentees are defined as undergraduates, graduate students, post-doctoral researchers and others working in a laboratory under a professor’s supervision.) Seymore suggests that clear policies are required in determining inventorship to protect a university’s licensing revenues. He believes it should not be up to professors alone to determine inventorship, as it is when determining who deserves coauthorship on a research paper. Instead, he suggests, “Universities must revisit their hands-off approach to the inner workings of the academic research group, at least with respect to determining the correct inventorship for a patent application.” Patent attorneys in the university’s technology transfer office or otherwise hired by the university on a case-by-case basis must work with the professor and other researchers to do this.11
What all this means is that inventorship is more than a reward for hard work or a means to keep staff members happy. Correct determination of the inventors on a patent is necessary if the lab manager’s organization is to protect its intellectual property and financial interests.
1. S.P. Thompson, “Dot your i’s and cross your t’s or you could be headed to invalidity,” Paper No. CHAL 49, presented at the 234th American Chemical Society National Meeting (August 19–23, 2007), Boston, Mass.
2. S.P. Thompson, “Worldwide inventorship issues,” Paper No. CHAL 37, presented at the 233rd American Chemical Society National Meeting (March 25–29, 2007), Chicago, Ill.
3. B.W. Crawford, “Navigating inventorship in the chemical industry,” Paper No. CHAL 3, presented at the 236th American Chemical Society National Meeting (August 17–21, 2008), Philadelphia, Pa.
4. J.M. Brown, “Determination and ethics of inventorship,” Paper No. CHAL 26, presented at the 234th American Chemical Society National Meeting (August 19–23, 2007), Boston, Mass.
5. Meuller Brass Co. v. Reading Industries, Inc., 352 F. Supp. 1357, 1372 (E.D. Pa. 1972).
6. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998) (online at http://www.ll.georgetown.edu/federal/ judicial/fed/opinions/97opinions/97-1269.html).
7. 135 F.3d at 1460 (citations omitted).
8. K.M. Ferris, “Inventorship in U.S. patent applications,” http://www.stoel.com/showarticle.aspx?Show=1786 (January 9, 2003).
9. T.L. Irving, “Only what you know can hurt you, and it can hurt badly,” Paper No. CHAL 19, presented at the 234th American Chemical Society National Meeting (August 19–23, 2007), Boston, Mass.
10. S. Seymore, “Inventor disputes within academic research groups,” Paper No. CHAL 4, presented at the 236th American Chemical Society National Meeting (August 17–21, 2008), Philadelphia, Pa.
11. P.J. Kellejer, “Working with your technology transfer office,” Paper No. CHAL 14, presented at the 235th American Chemical Society National Meeting (April 16–20, 2008), New Orleans, La.