Inventorship

Correctly identifying inventors in connection with patent applications is important as, in principle, the right to a patent belongs to the inventor or his or her successor in title.  Determining inventorship can be a tricky issue and the purpose of this article is to look at the background to inventorship and to making a correct determination.

Who is an inventor?

In the United Kingdom the inventor is the "actual deviser" of the invention. In order to determine who is the deviser of an invention the courts of the United Kingdom identify the inventive concept or concepts in the patent or patent application concerned and then identify who came up with the inventive concept.

A person is not an inventor merely because they contributed to the work in which an invention is based. Contributions have to be to the inventive concept. For example, someone who has worked solely on a project as a technician and who has not contributed to the inventive concept is not an inventor, no matter how hard they worked. We often prepare patent applications for university clients based on an upcoming journal article. Determining inventorship in relation to a patent application is different to determining who could or should be named as an author for the scientific paper. Authorship of scientific papers may reflect a relatively small contribution to the paper or even courtesy or political aspects within a university group or department. In contrast, the determination of inventorship for a patent application is a legal question and should be properly approached.

In the United Kingdom, the inventor has the right to be identified in a patent application and mistakes in naming inventors are relatively straightforward to correct. In contrast, however, in the United States a patent may be effectively invalidated if no reasonable determination of inventorship has been conducted or if an amendment to the inventors is made with deceptive intent. As the United States is such an important market for many of our biotech clients, a proper assessment of inventorship is necessary. In particular, it is not correct to name automatically supervisors or heads of department and the like as inventors on patent applications unless they have contributed to the inventive concept.

As mentioned above, determination of inventorship is a legal question and we are very happy to assist in clarification on this matter.

Determining Inventorship

There are no hard and fast rules on how to identify inventors but there are a number of issues that should be looked at when making a determination of inventorship. These issues have been considered most recently by the English High Court in connection with a number of patent applications in the name of the University of Southampton.

In summary, identification of the following is required:

i) The inventive concept(s) in the patent application;

ii) Persons who came up with the inventive concept(s) - he/she or they were the inventors; and

iii) Persons who merely contributed to the enabling disclosure of a patent application - he/she or they were not inventors.

First, there has to be some statement of what the inventive concept is - as inventorship cannot be determined "in the abstract". The claims of a patent specification can be a useful focus for people. The definition of the inventive concept may typically be found in the main claim of a patent application or may lie in subsidiary claims.

Then an investigation of each potential inventor's contribution has to be made with reference to contemporaneous materials such as notebooks, diaries and other records as well as any personal recollections of the circumstances surrounding the invention.

In interviewing potential inventors it may be useful to have separate meetings to avoid any pressure from others wishing to be named as inventors.

As mentioned above, it is not appropriate to name people who are only involved in a "technician's" role in genesis of an invention.

It is useful to make the determination of inventorship as early as possible, whilst sources are still fresh and whilst people are still available. It should be kept in mind, however, that additional inventors may become involved in relation to work done in the first year from filing of an initial patent application. It is not necessary to name inventors when making an initial UK patent application although it can be advantageous to do so. Typically, the first time that inventors have to be named is when a PCT application is filed claiming priority from one or more earlier British applications.

It should be kept in mind that laboratory notebooks should now be kept to a good standard, as they can be used in determining the timing of the making of an invention in relation to a United States patent application. In the United States, in contrast to the rest of the world, a patent is awarded on the basis of the "first to invent" rather than the "first to file" and hence determining inventorship for the United States is especially important.

Supervisors, heads of department and the like should not be automatically named as inventors.

Even though several members of a team may have done the work relating to the invention, not all members of the team should necessarily be recorded as inventors. Inventorship has to reflect a contribution to the inventive concept(s). Someone who has worked solely as a technician on an underlying project, but has not contributed to the inventive concept is not an inventor no matter how hard they worked. In this connection it should be remembered that contribution to the inventive concept is not the same as providing an enabling disclosure for a patent application, e.g. by the provision of examples, details of prototypes etc.

The determination of inventorship is essentially a legal question and therefore it may be best to involve a patent attorney in situations where inventorship is not clear or if there is some disagreement. We are able to provide an opinion on inventorship and to explain the background and the need for correct identification. We can also give more advice in relation to notebook requirements.

John Dean & Nicholas Jones