Patent Inventorship Determination

When a patent application is filed, it must identify one or more inventors. According to the Practical Guide to Australian Patent Law (Chris O’Sullivan and Carolyn Rolls, 2003), an inventor is a person whose contribution, solely or jointly with others had a material effect on the final concept of the invention.

If the incorrect inventors are named on the patent application then it can be invalidated and in many countries the misidentification is considered fraud against the Patent Office. A patent application that incorrectly identifies inventors is defective and must be corrected or it provides a basis for invalidating the patent.

It is important to understand that inventorship is a legal matter, not a collegiate matter and not all authors on a paper will necessarily be inventors on a patent. “Inventorship” is a legal notion that varies from country to country and is very different to the notion of a collaborator. A collaborator may make a vital contribution to the successful development of the technology but still not be an inventor. The contribution of collaborators, who have played an important role in developing a technology, can be recognized in other ways, such as authorship and sharing of net returns from commercialisation.

The lead investigator is almost always going to be an inventor but it is often not so clear whether or not collaborators, technicians, PhD students, post-docs etc are also inventors. One way to identify an inventor is to determine whether or not they contributed to the creation of an idea that is the basis of one or more of the patent claims. Another way is to determine who conceived the original ideas mentally as the reduction into practice in a physical sense does not involve invention (except where it leads to the creation of additional original ideas). Inventors may use the services of others to implement or test their ideas and the service provider will not be considered an inventor. Inventors can also seek advice from collaborators skilled in the art without the collaborator being an inventor.

Since matters of inventorship evolve through case law and patent laws tend to be open to interpretation, it is important that a patent attorney is involved in determining inventorship when there is more than one likely inventor. The key researchers will be able to identify likely inventors but since inventorship is a legal notion, only someone skilled in the law (and not the technology) can make this determination. Although researchers may in good faith identify themselves as inventors, University staff (including commercialisation staff) are not experts in patent law and so must rely upon advice from patent attorneys who are experts in this area and keep up-to-date with relevant case law.

Ultimately, definitive inventorship can only be determined by a court of law but a patent attorney or patent lawyer can provide legal advice on inventorship that can be relied upon in any subsequent court actions and indeed can be used as evidence to avoid a court case. Although court action is unlikely to occur, serious investors and licensees will ask what due diligence process UOW has undertaken to sort out inventorship on its patents. Accordingly, as part of its patent due diligence process, UOW will use patent attorneys to undertake formal inventorship determinations for all its patent applications where there is a possibility of more than one inventor.

Last reviewed: 27 November, 2007