Identification of inventors for a patent application is a critical step in the process. Here we discuss some of the issues around the correct identification of inventors
Who is an inventor?
Any person who has made an inventive contribution to an invention has the right to be named as an inventor. Details of an inventor are included in a patent application when it is published, and once again when it is published as a granted patent. Unlike authorship on academic papers, where any person who has contributed to the published research is usually named as an author, naming a person as an inventor on a patent application requires that the person made an inventive contribution to the invention as claimed. In determining inventorship, the key question is who conceived of the invention, as opposed to who reduced the invention to practice.
Importance to validity of a patent
The naming of inventors is important for the validity of a patent. In the US, failing to name an inventor, or incorrectly identifying an inventor, with deceptive intent, can result in a patent being held invalid or unenforceable. US patent procedure requires that the inventor sign an oath or declaration, in which they declare that they have read the patent specification and that they are in fact an inventor. European patent procedure does require the filing an oath or declaration. Of course, sometimes inventors are named, or not named, in error, or due to new information coming to light, and these errors are generally correctable.
Importance to ownership of a patent
As the ownership of a patent as a property right ultimately derives from the inventor(s), correctly identifying the inventor(s) is a prerequisite for correctly identifying the owner. According to European Patent law, inventions below to the inventor or their successor in title, and ownership of inventions can be validly transferred as a result of contractual or equitable rights. An example would be an employee-inventor who invents something during the course of their employment and who has a contract of employment that specifies that the employer owns such inventions. In this case, the employer would own the invention but the inventor would have the right to be named as an inventor.
In most cases, patent applications are filed in the name of an applicant (owner) that is different from the inventor. This may be because the invention is owned by the employer of the inventor, or because the inventor has set up a company to own the patent rights. In these circumstances, it is important that the inventor assigns their rights to the applicant (owner) either before or shortly after a patent application is first filed. The law of most European States requires that such assignment documents need to be signed by the inventors (assignors) and the owner (assignee). It is also good practice to have the signatures witnessed.
Occasionally, disputes arise between parties over inventorship. This may be as a result of one inventor believing that a second inventor is not entitled, or a third party believing that they should be named as an inventor. Resolving such disputes can be difficult, and generally involves each party setting out in writing their exact contribution along with supporting evidence if available. Evidence in these circumstances is often provided in the form of lab notebooks, emails or any other documentary evidence of conception or reduction to practice of an invention. In determining such a dispute, it is important to understand the invention and in particular the discontinuity between the invention and what was in the public domain when the invention was conceived. Inventorship disputes usually result in one or more inventor’s being removed, added, and in some cases a determination that there are no inventors because there is no invention.