In the United States, patent applications must be filed in the name of the inventor or inventors.  Inventorship is a legal determination and should therefore be confirmed with legal counsel.  It is important for the applicant to consult their legal counsel if there are any questions regarding inventorship.  Failure to properly identify and name the correct inventors in an application may greatly devalue or even destroy the resulting patent. 

 

First, the omission of an inventor or the improper inclusion of a non-inventor can invalidate a patent unless the omission or inclusion occurred without deceptive intent.  Second, a later identified inventor, who has not, and is not obligated to assign his rights to the patentee, may transfer rights in the patent, even retroactively, to a competitor, thus precluding suite against that competitor.  Finally, under joint development projects and the like, ownership of resulting patents is frequently granted to the inventor’s employer.  Therefore, the identification of inventors impacts which entity(ies) own the resulting patents.

 

Under 35 U.S.C. §102(f), “a person shall be entitled to a patent unless . . . (f) he did not himself invent the subject matter sought to be patented.”  The Court of Appeals for the Federal Circuit has recognized “[s]ince the word ‘he’ refers to the specific inventive entity named on the patent, this subsection mandates that a patent accurately list the correct inventors of a claimed invention.  Accordingly, if nonjoinder of an actual inventor is proved by clear and convincing evidence, a patent is rendered invalid.”  Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998) (citations omitted).

 

While the Patent Statute now provides for correction of inventorship errors, such is not necessarily a certainty or without other potential risks.  Under 35 U.S.C. §256, “[w]henever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.”

 

As specifically set forth, the error must have arose without any deceptive intention on the part of the named inventors.  While there is no longer a requirement for proof of facts and a lack of deceptive intention is generally presumed, patent owners should be cautious to avoid situations which may provide a challenger with facts to overcome such presumption.  For example, when third party consultants are involved, all potential inventors and ownership issues should be addressed up front, rather than avoiding the issue, summarily dismissing any “outside” inventors, and filing an application without notice to the third party.  There is a risk that doing so may be sufficient circumstantial evidence to support an allegation and possibly a finding of deceptive intent.

 

Additionally, correction of inventorship errors requires “application of all the parties and assignees.”  If an individual was improperly named as an inventor, that individual is one of the “parties” that will have to consent to removal of the individual as an inventor.  If that individual has an interest in remaining an inventor, e.g. a running royalty, it may be difficult to get that individual to consent to correction.  Such a situation may require a payoff or the like to the improperly named inventor, even though maintaining incorrect inventorship could result in invalidation of the patent, which would be of no benefit to any inventor. 

 

Even if inventorship can be corrected under §256, the correction may lead to another undesirable situation, particularly if correction requires adding an inventor who has no obligation to assign rights to the patentee.  It is well recognized that “in the context of joint inventorship, each co-inventor presumptively owns a pro rata undivided interest in the entire patent, no matter what their respective contributions.”  Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1465 (Fed. Cir. 1998) (footnote omitted) (emphasis added).  As such, the newly added inventor has an interest in the patent equal to that of the original patentee. 

 

Since, “as a matter of substantive patent law, all co-owners must ordinarily consent to join as plaintiffs in an infringement suit” (Id. at 1468), the newly added inventor would be able to preclude the patentee from bringing a patent suit against an infringer.  Alternatively, the newly added inventor would be free to assign, license or otherwise transfer her rights to any third party who would then be free to practice the invention. 

 

In Ethicon, the defendant identified an unnamed inventor and negotiated a license with him.  The defendant was then able to prove in court that the unnamed inventor was improperly omitted and had the court correct the inventorship to include the unnamed inventor.  The infringement suit was thereafter dismissed since the defendant was licensed under the patent, and thereby, free to practice the invention.

 

As indicated above, inventorship may also affect ownership of patents in the context of joint development projects and the like.  Often, joint development agreements provide that ownership of any patents arising out of the joint development will rest with the entity for whom the inventor was working.  In cases of a sole inventor or joint inventors from a single entity, that entity will own the patent.  In cases of joint inventors with at least one inventor from each entity, both entities will have a common ownership.  Accordingly, identification of inventors will have a clear impact on ownership.  Both parties should be cautious not to add inventors simply to impact ownership, as such may result in a potentially invalid patent, as discussed above.

 

In view of the potential negative impacts of incorrect inventorship, it is important to use best efforts to properly identify the inventors during prosecution.  Any individuals who  potentially contributed to the invention should be considered, and inventorship should be confirmed by legal counsel.  With the inventors properly identified, the risk of invalidation is minimized and all ownership issues can be resolved.

 

In determining proper inventorship, “[c]onception is the touchstone of inventorship, and each joint inventor must contribute in some significant manner to the conception of the invention.”  BJ Services Co. v. Halliburton Energy Services, Inc., 338 F.3d 1368, 1373 (Fed. Cir. 2003) (citations omitted).  The courts have defined conception as “the ‘formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.’  An idea is sufficiently ‘definite and permanent’ when ‘only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.’”  Ethicon at 1460 (citations omitted).

 

The question of whether an individual has conceived the invention generally arises when more than one individual has been involved in the development of the invention.  The courts have addressed many of these situations, with the following rules resulting therefrom.

 

“Because co-inventors need not contribute to the subject matter of every claim of the patent, inventorship is determined on a claim-by-claim basis.”  Gemstar-TV Guide Int’l, Inc. v. Starsight Telecast, Inc., 383 F.3d 1352, 1381 (Fed. Cir. 2004) (citation omitted).  “Nevertheless, for the conception of a joint invention, each of the joint inventors need not ‘make the same type or amount of contribution’ to the invention.  Rather, each needs to perform only a part of the task which produces the invention.  On the other hand, one does not qualify as a joint inventor by merely assisting the actual inventor after conception of the claimed invention.” Ethicon at 1460 (citations omitted).  In this context, it has been recognized that one who simply makes a request for others to create, simply provides the inventor with well-known principles, or carries out routine tasks of one-skilled in the art, generally, without more, will not be considered an inventor.  See Ethicon; Stern v. Columbia University, 434 F.3d 1375 (Fed. Cir. 2006) (student’s lab work on behalf of professor did not constitute invention); and Acromed Corp. v. Sofamor Danek Group, Inc., 253 F.3d 1371 (Fed. Cir. 2001) (unnamed machinist’s work found to be routine work of one skilled in the art).

 

Identification of the correct inventors is more than a mere recognition ceremony.  It is a legal determination that requires confirmation by the applicant’s legal counsel.  If an applicant has any questions regarding inventorship, those questions should be discussed with the applicant’s attorney.  If inventorship is incorrect, a patentee’s rights can be seriously impacted.  For each application, a thorough review of the inventorship of each claim should be performed at the time of filing and again upon allowance of the claims that will ultimately issue.  Additionally, at each of these stages, any ownership issues should be reviewed and resolved.