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Home Back Issues No 28: PATENT LAW: Will Collaborator Who Provided Only Test Facilities Be Considered Co-inventor?

May 10

No 28: PATENT LAW: Will Collaborator Who Provided Only Test Facilities Be Considered Co-inventor?

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Will Collaborator Who Provided Only Test Facilities Be Considered Co-inventor?

Reader Question: In my research lab, I had a concept and method I believed patentable, but needed (and eventually found) a fellow PI who could provide the testing lab and facilities. The concept works. This collaborator did not contribute to its conception. Will he be considered a co-inventor on the patent?

Expert Comments:

This is a great question that is asked quite often by those interesting in filing a patent application. The short answer is No, the collaborator testing the concept is not an inventor. Under U.S. law, an inventor is the one who contributed to the invention's conception — not merely one who assists in reducing the concept to practice.

There is no requirement that the inventor be the one to reduce the invention to practice as long that was done on the inventor's behalf, as is the case here. But one who merely reduces to practice or carries out experiments designed by another is not the inventor and cannot be co-inventor.

Because inventorship relates to the claims in a patent application, determining who an inventor is under the patent law is sometimes difficult. Inventorship is determined independently for each claim.

Because claims often are broadened, narrowed, added to, or deleted from during prosecution (negotiations with the U.S. Patent and Trademark Office), the correct inventive entity may change over the course of prosecution. Inventorship must be updated as the need arises.

Also, it is important to understand that inventorship decisions are based on factual evidence. Inventorship is a legal question that must be determined by a patent professional.  It should not be influenced by non-legal factors (e.g., office politics and business). Nor can political considerations (e.g., supervisors taking credit for the inventions of subordinates) or business considerations (e.g., not naming inventors who work outside the company- joint inventors) enter into the decision. In fact, a patent can be invalidated if it is found to be based on an incomplete, biased, or politically motivated investigation.

Because of the harshness of this penalty, liberal correction procedures are available to remedy the improper naming of inventors. Under these procedures, inventors can be added, removed, or substituted. The rules require that the error must have been made without deceptive intent.

A further requirement is that the application to correct inventorship be made diligently after discovery of the error. Therefore, to prevent potential problems, researchers, scientists, and engineers involved in the invention process should cooperate fully with the patent professional to aid him or her in obtaining all the facts required to make the correct inventorship determination.

Comments by Sara D. Vinarov, PhD, JD, patent attorney with Quarles & Brady LLP, Chicago.

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Comments (5)
written by Elric, May 11, 2010
It depends on how the payment was structured. If the facilities were paid for, then the work is protected because the services were paid for. If the facility provided the services without payment then that is their investment. Also reducing the patent to practice does qualify one as an inventor. This happened to me. It was very difficult to prove that the other collaborators were working under my direction, despite the documented questions they asked and the direction I provided. Always address these issues up front.
written by Help, May 11, 2010
My department chair insisted the patent app be in his name. But I'm the PI who came up with the idea and did the experiments. How can I get proper recognition at this point?
written by mvlbennett, May 11, 2010
This sounds to me like a very gray area, comparable to deciding who deserves co-authorship and in what order authors should be listed in the publication. To make a decision here would require much more specific information about the nature of the implementation and testing and whether creativity on the part of the tester was involved. The Glaxo/NIH example is instructive. The admonition to address the issues up front is apt.
written by jschaley, May 11, 2010
I don't agree that the payment is a factor. If the work that was 'purely technical' support was absolutely critical for proving the concept, I think it is common courtesy to include the person or people who provided it. You don't have unlimited time and you have to choose a collaborator wisely. While other labs could have done the same work, if you chose that lab and they came through with what was needed they deserve credit. js
The expert is not an expert in academia
written by realist phd, May 18, 2010
The expert provides the proper legal opinion, but the reality is that the vast majority of patents are worthless anyway. People get patents to build up their CV just like publications. If you are an academic, you should include anyone on the patent who worked on it using co-authorship of a publication as a guide.

If you follow the lawyer's advice, you will just get a worthless patent and have no friends. If you follow my advice, you will get a worthless patent but keep your friends.

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