1. Who is an Inventor?
Those who help conceive an aspect of the claimed subject matter in a patent application. Conception is key. Conception to particularly the substantive and novel aspects of an invention. That contribution must provide a technical advantage towards the utility of the invention. Each inventor must submit a declaration indicating they believe they are the true inventors.
2. THE INVENTORSHIP TEST
i. How the invention would it work?
ii. How the invention would be used?
In enough detail that one of ordinary skill in the art would understand how to make and use that invention.
i. Substantive Aspect
ii. A claimed invention, or a claimed portion
Consider the example of a button on a computer widget.
If the location of the button is important to the advancement of the state of the art, then that individual would be considered an inventor.
Conversely, if the individual’s only contribution is an insignificant button on a display, then that does not contribute to the technical advantage of the application they should not be named as an inventor.
As the patent prosecution process moves forward the list of inventors can change as the scope of the claimed subject matter changes.
3. Conception V. Execution
An inventor is one who contributes to the conception of the invention, not one who contributes to the realization or execution of the invention. Generally speaking, those who execute the invention as directed by the inventors are not considered inventors because they merely contributed to the realization of the invention. This is a general test to determine if any of those executors, in the process of executing the specification of the inventors, become an inventor themselves.
4. Hiring Engineers or Developers
Hired Engineers and Developers can be considered inventors in some cases. It is important to ensure that we retain the rights of these hired engineers and developers to any contributions they provide to the invention. It is also important to ensure that they transfer rights so that you, as the one who hired them, can file patent applications on the material they invent before any work on the project has started. This ensures that there will be proper assignment documentation and inventorship declarations when they are needed for prosecution.
Proper licensing is also a consideration when inventors want to continue to use their inventions after they exit an intellectual property agreement. Inventors may want to use the material they invented in working with you in the future and retain rights to their invention for future projects, this must be carefully negotiated. This also means that you must ensure any hired personnel do not use any of their previously invented material from when they might have been under a different intellectual property agreement. If any of the prior inventions are to be used it is imperative to ensure there are adequate licensing agreements. It is important to contact an IP professional to ensure that all agreements are properly in place to help navigate these case-specific questions.
5. the Importance of Inventorship
The United States operates on an inventor-centric patent system.
There are Two Founding Principles of our patent system:
1. True Inventors Can File
2. First True Inventor to File will be Awarded the Patent
This means that the first true inventors to file a patent application for their invention are entitled to the Intellectual Property Rights of that patent application.
It is illegal to conceal or misrepresent inventorship on an application and doing so would risk the invalidity of the patent rights or the sharing of those rights with another party.
The default rule is that the inventors own the rights to the patent, not the applicant, not the company that hired the inventor to do the work. This is why it’s very important to make sure the inventorship issue is resolved completely before work begins on the project, especially when there are multiple inventors involved in a project.
6. How to Handle Inventorship Issues
The best way to handle the inventorship issue is to handle it upfront.
By assigning the rights of the patent application before filing the provisional application. Ensure everyone that is brought onto the project has proper intellectual property rights agreements so that at a future date if they do become inventors, they will automatically transfer the rights to the company.
In our system, all of the patent rights stem from the inventor’s conception, if you are missing an inventor later in prosecution that has the ability to invalidate your rights. This makes it an important issue to get right from the start. Attribution is another decision to be made when filing a patent application. Patent applications are filed by and referred to by the first-named inventor, while this does not have legal implication, it can have sentimental value to the inventors, and is a further reason that proper invention declarations are maintained.
7. The Hostile Inventor
Occasionally you may encounter a hostile inventor situation. For example, when an inventor refuses to sign over any rights to the entity. This is a very sensitive situation and you must contact a patent professional to resolve this issue. There is past legislation that helps guide these negotiations to aid entities in resolving these scenarios. If not handled properly the hostile inventor can hold patent rights concurrently with the entity. This is why before filing any provisional application it is imperative to ensure that all listed inventors have transferred their rights in an executed assignment document.
Be inclusive as possible naming inventors. If those inventors are under the obligation of assignment and believe they are an inventor for the application, it is a best practice to consider that in their favor especially if they have to transfer their rights to your entity either way.
8. Practical Tips
1. Consider partnership and operating agreements should also list intellectual property rights and the disposition of those rights. What happens if the entity dissolves, how to handle non-competition periods, intellectual property rights are central to these questions.
2. Consider contractor agreements before commissioning the work. Before the work begins proper agreements need to be in place to address any intellectual property rights issues. All rights should be assigned and transferred to the entity or designated to be assigned to the company once invention takes place. Consider employment agreements should also cover similar issues.
3. If a patent application is filed without a complete list of inventors it could cause issues in the future, and it might be better to be over-inclusive rather than under-inclusive when naming inventors. Hostile inventors might arise and not cooperate in the necessary agreements, and the employment agreements should be written to over that. One example of this is to assign power of attorney in the employment agreement if the inventor is not willing to cooperate with assigning his intellectual property rights in the future.