Proper patent inventorship
It is not unusual for true inventors to be left off patents and for non-inventors to be named. Sometimes, this error is intentional and may involve personalities and/ or politics within organisations. This article seeks to clarify this issue so that the reader is able to properly apply US patent law when dealing with inventorship.
Many years ago, I received a number of invention disclosures from a corporate client’s chief engineer. I visited him at his office and he gave detailed drawings of ingenious ideas to me so that they could be patented. When I asked him to identify each and all of the people who contributed to the inventive concepts, he was firm in identifying himself as the sole inventor to be named on related patent applications.
Years later, during a question and answer period following an intellectual property seminar that I presented to the same client’s engineers, marketing and sales personnel, an engineer raised his hand and asked: “If I alone create product inventions which I document to my boss, but he adopts the ideas as his own and names himself as the sole inventor on patent applications, what effect might this have?
"I don’t want to alienate my boss or lose my job, but I feel as if I’ve been robbed and the products are a huge success in the marketplace.”
The implications of this type of deliberate ego-driven false designation of inventorship are considerable, and bring possible unenforceability claims of any resulting patents into play, rendering them of no real value to the company.
"SINCE ALL EMPLOYESS OF THIS COMPANY HAD ASSIGNED THEIR PATENT RIGHTS TO THE COMPANY UNDER AN EMPLOYER/EMPLOYEE AGREEMENT, THIS MISCONDUCT WAS NOT NECESSARILY MOTIVATED BY FINANCIAL GAIN."
Since all employees of this company had assigned their patent rights to the company under an employer/employee agreement, this misconduct was not necessarily motivated by financial gain. Although being named as an inventor on patents may in some companies result in an increased likelihood of advancement in position and/or salary.
The following samplings of US patent law can be used to develop guidelines to be followed. Also, see Guy F. Birkenmeier’s November 2008 Baker Botts LLP Intellectual Property Report for an informative discussion of due diligence as it affects inventorship.
