13 Aug How to determine who is an inventor for a patent application
“We are all inventors, each sailing out on a voyage of discovery, guided each by a private chart, of which there is no duplicate. The world is all gates, all opportunities.”
What does it mean to be an inventor? Is it the person who comes up with an idea for an invention?
― Ralph Waldo Emerson
Or is it someone who works on making the invention?
Under Australian patent law, the term “inventor’ is not explicitly defined, but it is generally accepted that an inventor is a person who has made an inventive contribution to at least one claim of a patent application.
Patent Ownership vs Patent Inventorship: why does it matter?
Patents are granted to inventors, in the eyes of the relevant patent office (the patent office in the country you are seeking protection).
The owner of a patent reserves all of the rights and benefits granted by the patent. However, the inventor is not always the owner of the patent.
Inventors have to be named when filing patent applications and should also be informed about the patent filing to give them the chance to verify ownership and any joint inventorship.
There can be many potential pitfalls relating to incorrectly recording or naming inventorship and ownership, including:
- invalidating your patent (eg grounds for opposition);
- being sued for breach of confidence (eg employees);
- wasting time and money (eg. filing and amendment fees); and
- damaging your reputation.
Unfortunately, some of these issues may only come to light years down the track.
It is extremely important to ensure that the correct inventors are named in any patent application and granted patent.
Employees, multiple inventors and agreements
It’s not surprising that many inventions are the result of a combined effort by a group of individuals. In many cases, inventors are employees of a company that owns the patent rights (by virtue of an employment agreement with the company). So when seeking patent protection it is important that inventorship and ownership are handled properly.
As well as for the purposes of research and development, a written record of active contributors should be maintained (in a laboratory notebook or sketch workbook, for example) throughout an invention’s conception so as to identify and qualify inventors.
To help clarify, here is a table you may find useful:
|Inventor / Joint-inventor (“active contributor”)||Not Inventor|
|Conceives the idea or conceived an essential element of the invention.||Puts forward hypothesis|
|Materially contributes to the development of the invention||Passively follows the instructions – contributes only labor and/or the supervision of routine techniques, but who did not contribute to the concept of one of the embodiments of the claimed invention.|
|Implements the invention||Executes results testing. does all the experiments with direction from another person|
We would recommend that any organisation where innovation development is a core part of their business should put in place an assignment system enabling them to acquire all the IP generated by their employees. To avoid later disputes, employment contracts should clearly state the rules relating to the allocation of IP rights ownership.
Inventorship is often best determined by a patent attorney. The attorney may examine notebook pages or other tangible proof of inventorship and they may ask parties to describe their personal contributions to the claimed invention.
To speak with one of our attorneys for advice about patenting your invention, please do not hesitate to contact us on 07 3369 2226 or email [email protected].