Inventorship Determination: Good Practice Reminder

    By Jason Derry --

When a patent practitioner receives an invention disclosure form, one or more persons will be listed as connected to the invention.  It's easy to get into the practice of simply listing all of those on the invention disclosure form as inventors when filing the application.  However, if that list was compiled by a lead scientist or supervisor or professor or anyone other than a patent attorney, it should be considered a launching point for an inventorship determination rather than a list of inventors.

Most inventors in the biotech and pharma fields are scientists who are used to publishing their scientific results.  When these scientists are the ones who are submitting an invention disclosure form, it is very common for them to list everyone who had anything to do with the subject matter of the invention using the same criteria as they would use to list the authorship for a publication.  As patent practitioners, therefore, we should take the list and investigate how each person contributed to the invention.

Ideally, if you work for a corporation or university or similar research institution, you have familiarized your scientists with the basics of who is and who isn't an inventor in the eyes of the Patent Office.  Or, you have designed your invention disclosure form with questions that increase the chances of the submitter identifying only the true inventors.  However, there are many reasons why the submitter might still list someone who doesn't qualify as an inventor, such as the submitter forgot what you taught them about inventorship, or the submitter doesn't want to offend or risk disappointing anyone who worked on the project.  Thus, the best practice is to ultimately make that determination yourself and not rely on a non-lawyer to do so.

Outside counsel should also be diligent in checking inventorship before filing an application.  Asking a few simple questions of a client, such as an in-house or university contact, is a good reminder that inventorship is important and that you are complete and thorough in your preparation and handling of your clients' applications, and also increases the chances that the application you're filing will withstand a possible inventorship challenge in the future.

The best time to do the inventorship determination is when the application is ready to file, because inventorship must focus on the claims.  The basic questions you need to remember are as follows:  who contributed to the conception of the idea as claimed, and who was involved in reducing the idea to practice.  Once you know who was involved, you should know exactly what they did to reduce the invention to practice.  Someone who was merely following instructions and directions during the process is not an inventor.  There must be some creative contribution.

For a more detailed review of inventorship determination, see "Determining Inventorship for US Patent Applications," by Patrick Gattari of McDonnell Boehnen Hulbery & Berghoff LLP.

Jason Derry, Ph.D., who graduated with honors from DePaul University College of Law, is a molecular biologist and founding author of Patent Docs.

Comments

[Sean]

For completeness, inventorship determinations should be revisited when the Notice of Allowance is received. Each named inventor needs to have contributed to at least one claim that is to issue.

Although there is often no difference, there can be differences in certain cases, e.g., when there is a restriction requirement.

[Waiting for January 20, 2009]

Absent any intent to deceive the patent office, what is the downside if someone is listed on the patent who didn't "really" invent a part of the final claim set? Specifically, say the lab technician is listed as an inventor but it turns out s/he only followed directions, and they are under a duty to assign the invention to the company - I don't see how that would make the patent any less enforceable. What am I missing?

[Jason Derry]

As long as there is no deceptive intent, there are ways to correct inventorship errors. Listing someone who shouldn't be is not generally as big a problem as omitting someone. However, see Yeda Research v. ImClone, where the inventors named on ImClone's patent were not the actual inventors. In addition, correctable inventorship mistakes can still cause a lot of headaches. Several reasons for avoiding such mistakes are nicely described in the following article by Degnan and Huskey of Holland & Hart: http://www.aipla.org/Content/ContentGroups/Speaker_Papers/Annual_Meeting_Speaker_Papers/200618/DegnanDOC.pdf.