The penalties for misnaming a patent’s inventors
There is a misperception among many that the identification and naming of inventors is less significant than they actually are. The threshold question as to who actually conceived a patent’s underlying invention is paramount. Under US law, determining such conception is often complex and does not lend itself to mathematical-type formulation.
Invention conception is normally complete when the idea is clearly defined in the mind of the inventor(s). It is fair to say that this is the mental part of inventive activity. A properly named inventor will have participated in the earliest stages of invention conception.
This article seeks to delve into the legal ramifications of the misnaming of patent inventors. It is hoped that the following illustrative scenario will assist in this regard.
Scenario
Imagine the delight of a creative design engineer (the “Engineer”) who comes up with a novel technical invention capable of being incorporated into a toy for the mass market (the “Invention”). In addition to its potential appeal to children, the Engineer has been able to provide a technical solution to a long-existing unsolved problem. Efforts by others to solve the problem have heretofore been unsuccessful. His solution to the problem includes electrical circuitry and computer software.
The Engineer is diligent in documenting his Invention in his laboratory notebook and, during this process, he wonders aloud whether his Invention might be patentable. He discloses the Invention to his immediate superior (his “Boss”) at the toy company where he works. His Boss, who is able to strictly dominate those who report to him, takes a great interest in the beauty of the Invention as well as its sales potential which would markedly enhance the company’s competitive posture in the toy industry.
The Boss is in a position to control all dealings with the company’s patent counsel. He submits the Engineer’s Invention disclosure documentation to the company’s attorney who, after a prior art search, renders a favourable patentability opinion. Costs being justified, the patent attorney is authorised to prepare and file a US patent application covering the Invention. When asked by patent counsel, the Boss mis-identifies the inventor and himself as co-inventors and both are listed as co-inventors on the patent application. Both the Engineer and his Boss sign the required declaration for the application, as well as an assignment of all patent rights to the company. The completed application, as such, is filed with the United States Patent and Trademark Office (USPTO). All patent-related paperwork and dealings with counsel are tightly controlled by the Boss, and the Engineer dutifully follows all instructions given to him by his Boss.
