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Jun 07

2010

No. 32: Patent Law: It's My Invention; Shouldn't My Name Go on Patent Application?

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PATENT LAW

It's My Invention; Shouldn't My Name Go on Patent Application?

Reader Question: My department chair insisted the patent application be in his name. But I'm the PI who came up with the idea and ran the experiments. How can I get proper recognition?

Expert Comments:

This is a multi-faceted question and can be answered in a couple of different ways depending on whether you ("who came up with the idea and did the experiments" to reduce the idea to practice), were or were not named as an inventor on the patent application when it was filed with the U.S. Patent & Trademark Office (USPTO).

(1) If the department chair was listed on the non-provisional application as a first-named inventor and you were not listed as an inventor, although you "came up with the idea and did the experiments" to reduce the idea to practice, then if the patent issues with claims to which you contributed, the patent will be invalid and unenforceable in a court of law.

For the sake of argument, I will presume that the patent application is still pending at the USPTO (i.e., has not yet issued into a patent). If this is the case, the inventorship can and should be corrected under 37 CFR section 1.48 to add your name — providing the error was made without deceptive intent.

In the process of determining correct inventorship, if it is determined by the patent agent/attorney that the department chair did not contribute to the subject matter of any of the claims pending in the application, she/he should be removed as an inventor on that application.

I am sure that the intellectual-property (IP) managers and/or patent attorney working for your research institution recognize that inventorship is a legal question based on factual evidence, determined by a patent professional. It should not be influenced by office politics or academic politics (supervisors taking credit for the inventions of subordinates), because this can jeopardize the validity of the patent.

Therefore, if you are concerned that you have not been given proper recognition for your inventive contributions to the claims in the patent application, I suggest that you, at least, confidentially bring this issue to the attention of the IP managers and/or patent attorney working for your research institution.

(2) If the department chair was listed on the application as a first-named inventor, and you were also listed as an inventor (even though not first named), then legally you have the same rights in the invention as the department chair.

The first-named inventor does not have any more rights to the patent than the other inventors. According to law, all inventors have an equal share regardless of how much or how little they contributed.

For example, if an application has 20 claims, and you contributed to 19 claims and the chair contributed to 1 claim, both of you are entitled to be inventors on the application.

If the patent attorney determines that the department chair has not contributed to any of the claims, then inventorship must be corrected, which eventually leaves you as a first-named inventor. Otherwise, the order in which names are listed does not legally matter, because each inventor owns an indivisible interest in the patent — unless all the inventors assign their rights to the research institution for some type of consideration, in which case the assignee owns it.

However, if you really believe for a variety of reasons that you should be listed on the patent as the first inventor, I suggest you discuss this with the IP managers and/or patent attorney working for your research institution. They may be sympathetic to your cause and be willing to pay the costs of re-submitting the formal paper work (such as the Declaration and Application Data Sheet) with the USPTO, listing you as the first inventor.

The declaration is a signed/dated document that identifies each inventor by full name, address and country of citizenship. This may help you get the status and recognition that you seek in a patent that issues.

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

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Comments (13)

Professor, Dept. Molecular and Cellular Biology, Baylor College of Medicine
written by David D. Moore, June 02, 2010

It would be a very serious mistake to go forward with this patent application if he did not contribute to the actual invention, since naming an incorrect inventor is clear grounds for invalidating a patent. Patent inventorship is very different from authorship on a manuscript, and a clear explanation of the distinction and the importance of this issue can be found here: http://www.stoel.com/showarticle.aspx?Show=1786

Professor, U of MN, Radiology
written by Bruce Hammer, June 02, 2010

I agree with Moore. Adding a person who did not intellectually contribute to the patent is reason for patent invalidation. Conversely, omitting an inventor's name from a patent disclosure/application will result in patent invalidation. Larger universities have a Patent & Technology Office, which in theory, should vet the application/disclosure and remove unwanted parasites.

...
written by Junior Edison, June 04, 2010

You guys sound lucky. On our campus we PIs must deal with a Patent/Technology Office that is very timid to question any names submitted as inventors, plus is slower than molasses in filing and following up applications for patents.

Sr. R&D; Engineer
written by Mark Emamian, June 07, 2010

If the idea came from a PI and an engineer designed and made it to work, should the engineer technically be named as a co-inventor?

...
written by RKS, June 07, 2010

I agree that submission of a patent that has incorrect declaration of inventors will simply invalidate a patent and this should be corrected immediately. I am surprised that a department head would not already know this unless the institution concerned is very small and not used to dealing with this issue.

There is a way to deal with the example cited above where 19 of 20 claims can be attributed to one of two inventors. Although the patent is technically owned outright by the university and both inventors have equal rights to the patent, as at most universities, the policy is to distribute a portion of the income back to the inventors (typically from 20 to 50%). This does not have to be split equally amongst two (or more) inventors if the inventors can agree to an uneven split based on their individual contribution to the claims...the best time to do that is before any royalties etc. appear. People tend to be least aggressive when negotiating "potential gains". For most patents on which I'm an inventor, I take the lions share (since the ideas were mostly mine). However, I always share inventorship with the students and even technicians who contributed to some of the ideas during execution of the research, even if they only had minor ideas. This allows me to recruit their time in helping in the execution of the patent application (at least liaising with the patent attorneys). Students and technicians are delighted to be listed as inventors on patents and are happy not to argue taking a minor portion of any royalties. Some may say that this too is not a legal way of assigning inventors but I think it is arbitrary and a matter of perspective as to how important a contribution is to the final success of a body of work in a patent- especially if any contribution to any single claim on a patent qualifies one to be listed as a co inventor with equal rights to the patent.

President/CEO
written by Ellen Shepherd, June 07, 2010

When businesses pay for the work that is done with the express purpose of obtaining patents, are the patents issued in the name of the business, or is it expected the inventors sign a document first which will require them to assign the patent to the company? If the latter, does the company then have to 'share' the patent?

...
written by RKS, June 07, 2010

In response to Ellen's question:
To my knowledge, private (including publicly traded companies) will almost always have their employees sign a document assigning all patents to the company. The company generally does not have a policy or obligation of sharing the income from the patent with the employee..even though they (employee) are the inventor (they have been paid in salary, benefits etc). The first part is true generally for universities, ie the patent is assigned to the university and they too have no obligation to share any income. However, they have a policy to share income with the inventors. This makes sense since without some incentive, inventors at universities would have nothing more to gain than burden in filing patents on behalf of the university.

Los Angeles area institution
written by Budget-Strained PI, June 07, 2010

My current research, which I conceived of and shepherded, is being written up an an "invention". But the campus patent woman says we have to list about 15 people as "inventors"--even the lab tech!! I don't mind all those names hitchhiking on what I discovered, but do they have the right to share in any royalties my invention earns?

More info
written by OldTechie, June 07, 2010

1. Being listed as an inventor requires participation in the inventive process. A technician who is paid a salary and did what they were told is not legally an inventor.
2. As RKS noted in response to Ellen, most employment contracts require assignment of inventions with no specified benefits. The inventor remains listed as the inventor regardless of who "owns" the patent.
3. As pointed out, whether one is first or last on a patent is immaterial as to benefits EXCEPT for academics, the first inventor is assumed to be the driving force and usually receives more academic recognition.
4. Hard to fathom a Department Chair who started this....

Owner CAA Engineering
written by GAC, June 07, 2010

With over 55 issued patents and a former GE patent board chairman, I agree with most of the other comments. The name on the issued patent should be the one who contributed first and most to the invention. Off the wall ideas and suggestions without material contribution (analysis and experimentation) are acceptable for listing as co-inventors – but there is always a principle inventor. The company who sponsors the invention should provide something of value to all the inventors – or they may find their employment agreement to be worthless. In 1989 - A former clerk for Sears, Roebuck & Co. has settled his dispute with the retail company over profits from a popular socket wrench he invented in 1964. Peter Roberts of Tennessee was 18 years old when he invented a quick-release wrench that eventually sold by the millions. Roberts, now 44, last week settled an $8.2 million patent infringement case that alleged Sears had cheated him out of his rightful royalties.

VPR
written by David, June 07, 2010

In order to defend and substantiate a patent, the inventor(s) must be able to document the substantive contributions made to the patent claims. It sounds as if the department chair in this case is carrying out an outdated, but sometimes still invoked, policy that usually applied to publications, that the department chair always gets his/her name on the paper, even if there was no contribution at all. Honorific authorship of any kind should be a thing of the past. But with a patent, "honorific" authorship will simply invalidate the patent and hand the idea over to others. This department chair needs to have a reality session with a knowledgeable patent attorney, and perhaps the head of tech transfer or the CEO who could see a potential revenue generator for the university go down the drain because of the ego and ignorance of a departmental chair.

@Ellen
written by Tech Transfer, July 12, 2010

1.Under the employment law of the state, the company may be required to share a portion of the royalties from any IP with the inventors. Federally sponsored research also requires a benefit for the inventors as well as offering licensing of the technology to a small business to support economic development.

2. In the USPTO, only natural persons are allowed to apply for patent applications. There fore, the patent will actually issue in the name of the inventors, not the owners. If an assignment of patent rights is timely filed, the ownership may be printed on the face of the issued patent.
In foreign countries however, the Owner may apply for a patent and receive the patent in the their name. The names of the inventors will also be listed on the patent.

All though order of names on a patent is not the same as authorship, it is common practice to order the inventors according to contribution. The reason for ordering is the patent will as "Smith et al" and it is generally desired that the first named inventor be the lead inventor.
In cases where multiple PIs of equal stature have contributed, placing the names in alphabetical order is accepted or even by institutional ranking.

@Ellen - Sponsored Research
written by Tech Transfer, July 12, 2010

Companies who sponsor research at Universities are not entitled to ownership of the intellectual property.
UNLESS - they have contracted the university to test a product, in which case, they have given a PI a series of steps to complete and are asking for a report on the findings.
In the event that the Faculty member should devise a way to make Companies IP work better, the faculty member (ie the University) retains ownership of the IP developed by faculty member.
Any company who is sponsoring research at the university should have a detailed Sponsored Research Agreement that includes a subsection on Intellectual Property.
Most universities will offer the Company the "First right of refusal" which allows the company to review the IP for licensing purposes prior the university offering the IP for sale to others.
In other cases, a non-exclusive/exclusive domain specific license may accompany any sponsored research.
However, the university retains ownership of any and all intellectual property generated by their employees.

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