US jurisdiction report: Who should be named as an inventor on a patent?

Apart from the economic impact inventorship may have, there is the pride one will gain from being listed as an inventor.

In some companies, an employee’s patentable technical contributions may affect compensation, status, and opportunities for advancement. For this reason alone, there will be a race to invent. Of course, this will benefit the company as well as the creative employee.

In many companies, new employees for any position are asked to sign an employer-employee agreement which will contain, among other things, provisions requiring the employee to transfer and assign to the company all inventions conceived or reduced to practice while employed.

For ownership, fairness and legality require that the invention(s) have some relationship to the business or activities of the company, or that the invention(s) are developed using the company’s resources.

The courts have been known to strike down agreements that are over-reaching and unreasonable.

A problem arises when several people contribute in one way or another to the development of a new product, especially when several of them request to be listed as an inventor or co-inventor.

What is the proper way for a patent attorney to resolve this question, and what are the considerations that will go into arriving at a proper decision?

Get the names right

The correct naming of inventors is of the utmost importance. The improper naming of inventors on a patent can be grounds for rendering a patent unenforceable or invalid, a very severe penalty with far-reaching implications. This includes omitting a true inventor or adding as an inventor someone who does not qualify for inclusion.

Who makes the decision? The law is clear that inventorship is determined by a patent attorney, who investigates which individuals truly made personal contributions to the claimed invention.

This investigation will include communications with all potential inventors who are asked to describe their personal contributions to the claimed invention.

Emails, notes, and notebooks, if they exist, may be a source of relevant information in this regard. The patent attorney will decide which individuals, solely or jointly, have intellectually contributed to at least one element in the patent’s claims.

There will be those who believe they should be included in the list of inventors. If they are omitted, hurt feelings and anger may follow. On the other hand, there have been instances where individuals in positions of power within an organisation have had their names improperly listed as inventors.