Any person who invents patentable technology is by default entitled to the rights in any patent granted in respect of that technology. When filing a patent application, it is therefore important to know which person(s) actually made an inventive contribution to the technology of the patent application.
Why is inventorship important?
It determines ownership of the eventual patent. Knowledge of ownership is also important for ensuring that any priority claim is validly made. In some countries (e.g. the USA) the inventorship issue is so important that deliberately falsifying it in a patent application can invalidate any patent resulting from the application.
Accordingly, for any prudent patent applicant, there should be a careful determination of the identity of the inventor(s) for every patent application, followed by careful confirmation that the necessary rights have passed from the inventor(s) to the intended patent applicant. This will be discussed in more detail below.
In some circumstances there may be restrictions on where the first patent application for an invention can be filed depending on where the invention was made – in effect, where the inventors were based at the relevant time.
Furthermore, from a practical point of view, it is generally easier to sort out the chain of ownership and any possible ownership disputes at an early stage of the patent application procedure. Later in the process matters may have become more contentious and relevant evidence may have been lost or forgotten.
How to determine inventorship?
The criteria for deciding who should be considered an inventor are quite different to those normally applied to determining authorship of a scientific research paper. There are no actual rules laid down in law, but the following is the approach generally applied in the UK.
Firstly, it is necessary to define the invention (or inventions) which form the basis of the patent application. This is often referred to as the “heart of the invention(s)”. Generally speaking, an invention can be any new product or apparatus, or method or process, which is properly described in the application. This can be assessed by comparing experiments, data or ideas disclosed in the patent application with previously published technology.
If there is any doubt about what the invention(s) may be, the matter should be discussed with the patent agent who is drafting the patent application.
The inventors are the “actual devisers” of the invention(s) described in the patent application.
So, once an invention is defined, it is necessary to determine who actually devised it. Generally speaking this may include anyone who:
- Conceived the initial ideas which defined the research which led to the invention;
- Actually devised the experiments or products which form the basis of the patent application;
- Carried out any experiments or other processes described in the patent application which required that person to show initiative to conceive and/or complete, for instance because unexpected practical difficulties had to be solved;
- Interpreted the data disclosed in the patent application, and recognised the significance of results.
Generally speaking this will not include anyone who:
- Simply carried out work under instruction (regardless of how much skill and effort this took) particularly if the work took no initiative and required no modifications to carry out as instructed;
- Had no part in the research, regardless of whether or not they funded it, were associated with it in other ways, owned the facilities which were used in the research, published earlier relevant work, or contributed very general work or assistance;
- Was a Project Manager or Supervisor but did not contribute technically to the actual invention.
The names of all people who contribute to the actual devising of the invention(s) should be included as inventors on the patent application. There is no significance in the order that the names are published.
Telling the Patent Office
The name(s) of all the inventors must be given to the Patent Office, either when filing an application or shortly afterwards. This is true even if the inventors do not own the invention, for example because it belongs to their employer or has been assigned.
The inventor names will be published on the front page of the specification.
Some patent offices may inform each inventor that a patent application has been filed (so that they, or others, have a chance to dispute the ownership of the invention). In some countries the signature of each inventor will actually be required in order to process the application.
It may be necessary to change the inventorship details that have been provided to the Patent Office.For instance spellings or other details may be corrected, the name of any inventor who should have been mentioned but was not may be added, and any person who was named as inventor but who should not have been may be deleted.
It is also possible that the invention may be redefined during patent examination and this may lead to a new analysis of who the inventor(s) are.
In general, making such changes is straightforward - a mere formality for which there may be an official fee.
Where there is disagreement, proceedings can be contentious, and ownership of the patent may be affected by the outcome.
Crucially inventorship should always reflect who devised the invention, regardless of whether or not this has implications for ownership.
What is the normal ownership situation?
By default in the UK, the inventor is the first owner of an invention. However, in the vast majority of cases the ownership of the rights to a patent will pass from the inventor(s) to their respective employer(s) by virtue of their employment.
In such cases it is the employer(s) who own the rights.
The employer will usually own the invention(s) if:
a) the employment is in the UK; and
b) the employee is either expected to make inventions for example, employed to do research; or is a very senior employee.
In some circumstances, for example if the invention is made by a junior employee outside the course of their normal duties, the employee will by default own the invention.
If, for example, the employee is a junior employee not employed to do research, then the rights to the invention may not automatically belong to the employer.
A contract of employment may help to determine whether or not the rights of the invention are automatically transferred from the employee to the employer. Where there is any doubt as to whether the rights have been transferred, the inventor(s) should sign a formal agreement transferring their rights to the employer(s) to confirm the situation.
Four common problem situations which are sometimes overlooked are as follows:
- Where the company whose employee(s) made the invention is part of a group of companies, then it is wise to check that the employee(s) concerned are in fact employed by the company which is to file the patent application and not, for example, of a subsidiary or service company. Again, if there is any doubt, a formal agreement may be required.
- If some or all of the research work has been done by an academic institution, then it is possible that some of the inventors (e.g. PhD students or visiting scientists) are not in fact employees. It is also possible that more senior academic staff may have complicated employment arrangements with the academic institution or special conditions relating to inventions. Inventions in these cases may not therefore automatically belong to the academic institution or sponsoring company.
- If any of the inventive research has been done by a sub-contractor or a consultant, then there is no employment relationship and the particular contracts involved must be examined carefully.
- Where the inventive research results from a collaboration between different companies or institutions, the ownership is dictated not only by the existence of employment contracts, but also by the contractual relationship between the collaborators.
If you have any questions about inventorship and/or ownership of inventions, please ask your usual Mewburn contact or email firstname.lastname@example.org.
This information is simplified and must not be taken as a definitive statement of the law or practice.