The terms ‘author’ and ‘inventor’ are not synonymous.
Generally, an author should be the individual(s) who wrote or contributed to writing a particular work. In the scientific world, authors of journal articles are typically those persons involved in designing or performing the experiments or in writing the resulting manuscripts. In addition, authorship is sometimes granted for the recognition of hard work or even for financial support.
In contrast, inventors of subject matter in patents have to be legally determined, according to the criteria of patent law, by their involvement in the original conception of the invention (not necessarily the same individual(s) involved in determining whether the invention works, or writing the analysis).
The rules and guidelines for determining inventors are established by laws and judicial decisions and can differ from country to country.
“Courteous” giving of inventorship may have serious negative consequences.
An erroneously identified “inventor” who was not actually involved in the conception of an invention, or an omitted inventor, may have serious consequences for the patent owner. In the extreme, such mistakes can result in the patent being invalidated. Inventorship is therefore a crucial issue in patent law. The following sections summarise the main issues regarding inventorship in the United States, Australia and Europe.
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2. Who is an inventor?
2.1 United States
Because an inventor is defined on the basis of the claimed invention, it is necessary to understand the legal meaning of an ‘invention’.
An invention is composed of two aspects:
- conception – the formation of a definite idea of the complete and operative invention in the mind of the inventor, and
- reduction to practice – the process of showing that the claimed invention works for its purpose. In the absence of an actual reduction to practice, an invention is deemed to be “constructively” reduced to practice when a patent application is filed.
In the United States, it is generally accepted that:
An inventor is a person who made an inventive contribution to the invention as defined by the claims of the patent application. To be an inventor, the inventive contribution must go to the conception of the claimed invention.
According to a court decision “to claim inventorship is to claim at least some role in the final conception of that which is sought to be patented” [1]. The analysis of inventorship, therefore, begins with determining when complete conception occurred.
The rule is that complete conception is achieved when a person of ordinary skill in the relevant art could construct the invention without extensive research or experimentation [2].
Where the original conception is complete enough to enable another (the practitioner) to reduce the invention to practice with adding nothing more than routine skill, the contributor to the conception of the claimed invention, and not the practitioner, is an inventor.
EXAMPLE 1: Simone, a PhD student, constructs a new plasmid according to the scheme devised by her supervisor. She does not become an inventor because she was merely following the directions of her supervisor. Her supervisor is the true inventor.
Thus, participation in the reduction of the invention, without more, does not make an individual an inventor.
Someone participating in the reduction to practice AND contributing to the final, complete conception is an inventor, but participation only in the “reduction to practice” does not warrant inventorship.
EXAMPLE 2: Tony is a manufacturer who makes a new product according to the specifications given to him by his boss. Tony is not the inventor because he has merely contributed to the reduction to practice. However, if he contributed to the conception of the new product, both he AND his boss would be inventors.
As sometimes occurs, the original conception provides a prototype or basis for the invention but does not represent the final invention which is eventually claimed. An inventor can seek the help of others when perfecting the invention without the helper necessarily becoming an inventor [3].
Furthermore, an individual who only makes changes to the production method while reducing the invention to practice is not an inventor.
EXAMPLE 3 A post-doctoral physicist adds a feature to a prototype which her laboratory is working on. The additional feature will give the prototype another useful purpose. If the new purpose is claimed in the patent application, the post-doc has contributed to the conception of the invention and, as a result, is an inventor.
No inventorship is warranted for any invention(s) that are not claimed in the application. The claims are the only part of a patent that defines the boundaries of the patent owner’s rights, so the claims determine the inventorship.
Regardless of inventions made by others that are described in the patent text or even used in the production of the invention, if they are not recited in the claims, inventorship is NOT warranted for the other person. For information on the parts of a patent, see How to read a patent.
If the claims have to be changed or claims are dropped as a result of restriction or examination by the patent office, for example, individuals listed as inventors on the original patent application may no longer be inventors of the revised claims.
Besides risking invalidation of a patent, other unwanted consequences can hurt a patent owner who does not name an inventor.
In a real-life example, a university graduate student who contributed to an invention was not named as an inventor on the associated patent application. The patent sought to cover transgenic cotton and methods for transforming it. Monsanto was later assigned the patent by her fellow inventors who were named on the application. Monsanto’s competitor, Aventis, discovered the unnamed inventor and sought to have her correct the inventorship on the patent and then transfer her rights to the technology to Aventis. She did so and Aventis received the same ownership rights as Monsanto (see section 3.1 on joint inventorship). If the graduate student had been named initially as an inventor, Aventis would have needed a license from Monsanto to use the technology.
2.2 Australia
In Australia, the laws surrounding inventorship are silmilar to those in the United States. The term ‘inventor’ is not defined in the Australian Patents Act (1990) and, unlike United States courts, Australian courts have provided very little guidance on determining inventorship.
It is generally accepted that:
* an inventor is a person who has made an inventive contribution to at least one claim in the patent application.
Disputes often arise where more than one person has or thinks they have contributed to an invention. In these situations inventorship is usually determined by either a ‘but for’ test or a ‘material effect’ test.
In the ‘but for’ test:
* if the invention would not have occurred but for the involvement of a particular person, then that person is an inventor [4].
EXAMPLE 5: Miles and Davis are plant ecologists. They are working together on a project to discover why some plants are resistant to high levels of soil arsenic. Miles collects plants from contaminated sites and tests for arsenic resistance. On the plants which Miles finds are able to tolerate high arsenic concentrations, Davis performs a genetic screen to determine the basis for resistance. Davis finds that resistance is conferred by a particular genetic sequence. They decide to patent the molecular sequence conferring resistance.In this case, both Miles and Davis are inventors. While Davis discovered the sequence conferring resistance, ‘but for’ the collection of plants and the identification of resistant plants by Miles, Davis would not have had any material or reason to discover the genetic sequence.
The ‘but for’ test however, is not particularly precise. In the extreme, under this test, it is possible to be considered an inventor without actually contributing to the conception of the invention.
For example, if a laboratory assistant in Example 5 above collected the plants to be used by the ecologists but did not participate in any of the experimental work, using the ‘but for’ test, the assistant could also argue that he is also a joint inventor.
A more recently fashioned test that is often applied is the ‘material effect’ test. It is more accurate in the sense that it is based on the facts and circumstances of each case.
In the ‘material effect’ test:
* a person is defined as an inventor if her contribution had a ‘material effect’ on the final concept of the invention [5].
EXAMPLE 6: Paul is employed by Jane who has designed and manufactured a plant growth chamber prototype which is temperature controlled. She intends to market her growth chamber to plant breeders and horticulturists. Paul modified the glasshouse so that the light level and concentration of CO2 can also be independently controlled.It is likely that Jane has made the key inventive step by actually designing and building the glasshouse. Without the glasshouse Paul would not have been able to make his modifications. However, the installation of light and CO2 controls by Paul had a ‘material effect’ on the final form of the glasshouse. As a result, Paul is also an inventor.
While a precise definition of “material effect” remains to be established, s ome guidelines can be offered. Specifically, a ‘material effect’ does not need to apply to the key inventive step.
As articulated, the tests used in Australia appear less precise than the tests that are used in the United States to determine inventorship, p articularly the ‘but for’ test.
When naming inventors on patent applications it is advisable that the most stringent test for inventorship is applied in order to avoid any penalties that may occur from the incorrect naming of inventors.
2.3 Europe
In Europe, the situation is complicated by the existence of the European Patent Convention (EPC). The EPC allows a system by which a patent application is examined by a single patent office (EPO), resulting in patent rights granted only in designated European countries.
The EPC does not define the term ‘inventor’ or ‘invention’, but it does grant an inventor the rights to a European patent. Ultimately, although a patent may issue from the European Patent Office (EPO) and have identical claims in each designated country, the determination of inventorship is made on a country-by-country basis.
Inventorship is ultimately defined by the national legislation in European countries.
Therefore, even though EPO examined the patents, the term ‘inventor’ is defined in accordance to each individual members’ legislation.
For example, in the United Kingdom, where the term inventor is defined as the “actual deviser of the invention…”. (s7(3) Patents Act (1977)). It is generally recognized that the actual deviser is the person(s) who contribute(s) to the novelty or inventive step of the invention.
In the case of inventions made in the course of employment, inventorship is determined by the laws of the country of business of the employer.
EXAMPLE 7: Pierre is a French national working in Germany, in the German laboratory of a large multinational agricultural biotechnology company, which is incorporated in England. While employed in Germany, Pierre is involved in developing a new method of plant transformation.According to the EPC, whether Pierre is an inventor is determined by the national laws of the country where the employer holds his business.At first glance it would appear that Pierre’s status would be governed by German law, but the fact that the employer is a company which is incorporated in England suggests that the laws of England governing inventorship should apply.
3. Can there be more than one inventor?
3.1 United States
More than one inventor can be named on a United States patent, and the concept is explicitly recognised in the U.S. Code (U.S.C.).
In the case of joint inventors, it is not necessary for the inventors to “physically work together or at the same time,” “make the same type or amount of contribution,” or “make a contribution to the subject matter of every claim of the patent” (35 U.S.C. 116). As such, it has been a matter for the courts to establish guidelines.
Multiple individuals often ‘brainstorm’ together and as a result, come up with an invention together. In this situation all individuals would be awarded inventorship.
There is no need for a joint inventor to be able to identify a specific component of the invention as her own idea. However, she must be able to say that she contributed to its conception [6].
Furthermore, joint inventors need not make a contribution to the subject matter of every claim in the patent. As a result, inventorship is determined on a claim-by-claim basis. Thus, if a claim is abandoned during examination of the patent, inventorship is re-assessed. If an inventor was named for the purposes of that claim alone, then that inventor is removed by request of the applicant.
All inventors on a patent are awarded equal rights.
Regardless of the amount of individual contribution to the invention, each named inventor on a patent has the right to exclude others from making, using, selling, offering to sell, importing or importing a product made by a process patented in the importing country.
Moreover, these rights can be exercised by any one of the inventors without the consent of the others (35 U.S.C. 262) or without having to share any income with, or account to, other inventors.
EXAMPLE 8: Lisa and Margaret are co-inventors and thus, co-owners of the rights to an invention. Bart seeks the permission of Lisa to use it. Lisa does not have to consult Margaret in regards to Bart being able to use the invention. She can allow Bart to use the invention without seeking Margaret’s permission.(Note: If Lisa and Margarent have assigned their rights in the invention to their employer, as is often the case in an employment agreement, Bart would have to seek the employer’s permission; see below).
3.2 Australia
The situation in Australia with regard to joint inventorship is almost identical to that in the United States.
- The invention must only come about because of the involvement of all parties [7]
- A person who merely follows instructions to construct the device is not an inventor [8].
- If however, the person suggests a change in the original concept that gives it an application or advantage not contemplated by the original concept, then the person is a joint inventor of the improved device [9].
In Example 6 above, Jane did not contemplate that her custom glasshouse could have independent light and CO2 control. These individual controls would make the glasshouse suitable for plant scientific research purposes as well as growth and horticultural purposes. Paul has modified the glasshouse in a way that made it more suitable for scientific research. He has therefore given it an advantage or application that Jane did not contemplate in her original conception. Paul is therefore a joint inventor.
Entitlements to any inventions arising from the collaboration are shared between parties. Each inventor is entitled to use the benefits of ownership for their own purposes without the consent of the other joint inventors.
However, in contrast to the United States Code:
Each inventor must seek the consent of their fellow inventors before a valid license or assignment of rights can be granted.
That is perhaps the most significant difference that exists in patent law about inventorship between the two countries.
EXAMPLE 9: Dr Jay and Dr Kay developed and patented a novel scientific methodology which is of commercial interest. Dr Tee is the CEO of a scientific company who approaches Dr Jay to negotiate a license of her methodology in order to use and commercialize it. Before granting a license to Dr Tee, Dr Jay must seek the consent of her fellow inventor Dr Kay.
3.3 Europe
The EPC recognizes that there can be more than one inventor on a patent application (Article 59). The rules, however for determining joint inventorship are governed by the national laws in each European member country and are not discussed here.
4. Can ownership rights be assigned?
4.1 United States
The rights of inventors can be assigned (legally transferred) to another person or organization.
If an inventor has given away or sold his rights, the owner is then free to exploit the patent without needing permission from co-owners [10].
In that case, the owner acquires all the rights discussed here. If all inventors assign to the same person or company, then there is a single owner.
Owners can change. Inventors can not.
Unlike every other country, in the United States only an inventor can apply for a patent (35 USC 111).
Thus, if the inventor has transferred her rights to a university, corporation, or other business entity, the acquirer of the rights cannot apply for a patent to the USPTO in its own name, but may be registered with the patent office as the owner (or assignee) of the patent.
EXAMPLE 10: Dr Buick is a scientist employed by General M. University. Dr Buick invents a new system of growing hydroponic plants and wishes to patent the invention. Dr Buick is the inventor of the system and is named as such on the patent application. However given that the system was developed at General M. University in the course of Dr Buick’s employment, General M. University will be the owner of the system. Therefore General M. University will be designated as the assignee on the patent, and has the right to confer licenses to use the patented technology or not.
4.2 Australia
The inventor is the person entitled to ownership of the patent, however ownership can be assigned.
In some situations, ownership is not granted to the inventor.
For example in an employer-employee relationship, in most circumstances an employer is entitled to the benefit of an employee’s invention, provided that the invention was developed during the course of employment [11].
EXAMPLE 11: John is a lab technician who is employed to manage the daily operations of the scientists. He does not participate in any research activities and his role is strictly a managerial one. Unbeknownst to Julie, his employer, John possesses scientific skills and after work hours he manufactures a drug that slows down the proliferation of cancer cells. If John is employed as a scientist his drug would be owned by the employer, Julie [12]. In this case how ever, John acted outside the scope of his normal duties as a lab technician and it is likely that the invention belongs to him [13].Consider however, the situation where John created the drug during his work hours. In this case, there could be uncertainty and quite possibly ill-will in determining ownership. To determine ownership in situations such as these, a court will consider a number of factors, including the nature of the employment, the employee’s duties, whether the employer has the authority to direct the employee’s work, and also whether the employee was employed to do the activity which resulted in the invention.
4.3 Europe
The European Patent Convention also allows persons or entities other than the inventor to apply for a patent.
The way by which ownership was acquired i.e. by assignment or contract from the inventor, must be disclosed. It is also possible to indicate different owners for different designated countries.
5. Can inventorship be altered after a patent has been issued?
In all three jurisdictions, in the worst case scenario, a patent can be deemed invalid if the true inventors are not named on the application.
When two or more people make inventive contributions to a patentable discovery, all inventors must be named in the patent or risk the patent’s invalidation. In most cases, however, a court will order correction of inventorship.
The same applies if there is only a single inventor. The true inventor must be named correctly and completely on the patent application.
In Europe, any contests regarding the rights to be designated as an ‘inventor’ must be undertaken in a national court.
It simplifies matters though that a decision of one national court will be recognized by the courts of the other designated countries on a European patent application.
Inventorship is a fundamental issue in patent law, which is often contested due to the potentially serious consequences of misnaming inventors (i.e. patent invalidation). Inventorship disputes are usually surrounded by emotional issues difficult to resolve, and may result in lengthy litigation.
6. Summary of key aspects of inventorship
| United States | Australia | Europe | |
|---|---|---|---|
| Inventor | Must make an inventive contribution to the invention as defined by the claims | As in United States | Defined by national legislation in individual EU member countries |
| Test to determine inventorship | Contribution to overall conception of invention | ‘But for’ and ‘material effect’ test | As above |
| Joint inventors | No need for inventors: – to physically work together; -make same amount or type of contributions; -make contribution to every claim (35 U.S.C. 116) | Allowed under s63 Patents Act 1990; If a person solves a problem not recognized by initial inventors; solves a recognized problem that initial inventors had been unable to solve; or produced an advantage not contemplated by the named inventors they are usually named as joint inventors | Recognized in Article 59 of the EPC |
| Rights | – Equal and undivided; – can be assigned; – no need to obtain each inventor’s consent for licensing agreements or pract icing the invention (35 U.S.C. 262). | As in United StatesEXCEPTconsent needed from all inventors before any licensing agreement can occur (s16 Patents Act 1990). | Most European countries require permission of other inventors before licensing agreements can be entered into. |
| Penalty for incorrectly naming inventors | Possibly patent declared invalid if deception exists. However, most often the court will order a change in inventorship. | Same as United States. | Penalties under national legislation (EPC Article 64(3)). Patent may be declared invalid. |
[1] Mueller Brass, Co. v Reading Industries 176 USPQ2d 361 (1972)
[2] Sewall v Walters 30 USPQ2d 1356 (1994)
[3] Shatterproof Glass Corp v Libbey-Owens Ford Co. 225 USPQ2d 634 (1985)
[4] Harris v CSIRO ((1993) 26 IPR 469)
[5] Row Weeder v Nielsen ((1997) 39 IPR 400)
[6] Mueller Brass Co v Reading Industries 176 USPQ 361 (1972)
[7] Costa v GR & IE Daking Pty Ltd
[8] CSIRO v Gilbert and Hazelwood decision ((1995) AIPC P91-171; 31 IPR 67)
[9] Falkenhagen et al. v Polemate Pty LTD et al. ((1995) APO 32)
[10] Schering Corp. v. Roussel-UCLAF SA, (1997) 104 F3d 341
[11] Sterling Engineering CO LTD v Patchett [1955] AC 534.
[12] Loewy Engineering’s Application 69 RPC 3
[13] Selz’s Application 71 RPC 158.
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