Disentangling Inventorship

The Journal of the Association of University Technology Managers
Volume XIII (2001)
Disentangling Inventorship
Edward R. Gates
Michael N. Rader1

The determination of inventorship under United States patent law has been described by the courts as "one of the muddiest concepts in the muddy metaphysics of the patent law" [Mueller Brass Co. v. Reading Indus. Inc., 352 F. Supp. 1357, 1372 (E.D. Pa. 1972)]. Disentangling the parameters underlying this muddiest of concepts is crucial to all those involved in research and development, particularly in the university setting.

The patent statute defines an inventor as one who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" [35 U.S.C. § 101]. This general definition, however, is of little practical help when determining who should be named as an inventor on a patent application. Often, many individuals may contribute to an invention, on many different levels-from providing funding or other resources, to offering overall direction, to designing laboratory experiments or prototypes, to carrying out the mechanics of those experiments, or physically building those prototypes.

Over time, the courts have attempted, with limited success, to provide a more user-friendly framework for applying the general definition of inventorship in the patent statute. In general, courts have held that conception of the invention-that is, the formulation in the inventor's mind of a "definite and permanent idea of the complete and operative invention, as it is...to be applied in practice"-is the touchstone of inventorship [Burroughs Wellcome Co. v. Barr Labs Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994)].

When two or more individuals collaborate on an invention, the patent statute provides that they may apply for a patent jointly. To qualify as coinventors, the two individuals need not make the same type or amount of contribution. The test is still whether each contributed to the conception of the invention, and the necessary level of participation is measured in terms of material contribution to at least one claim of the patent. [Ethicon Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998)]. As discussed below, this standard can sometimes be problematic for a number of reasons. First and foremost, it makes a firm determination of inventorship at the time of application for patent impossible, since the claim scope may change during prosecution of the patent.

In the university setting, the determination of inventorship is further complicated by factors such as economic incentives for obtaining patents, political issues associated with inventorship, and the complex relationships between researchers, administrators, university technology managers, and patent attorneys (frequently from outside law firms). Yet these hurdles must be overcome to ensure patent validity-which, in turn, safeguards the research goals of the inventors, the reputation of the university, and the technology transfer office's noble purpose of leveraging intellectual property for the public benefit.

The Legal Significance of Correct Inventorship

Proper naming of inventors is one of the fundamental statutory requirements for a valid patent and should receive at least the same scrutiny as novelty, nonobviousness, or utility of the invention before an application is filed and throughout the application process. Failure to name an inventor (nonjoinder) or naming of an incorrect inventor (misjoinder) can invalidate a patent.

Nonfraudulent mistakes in inventorship can be corrected either during patent prosecution (indeed, as noted above, such correction may be necessitated by claim amendments, additions, and cancellations made during prosecution) or after issuance of the patent. In the latter case, such corrections may be made either by application to the Commissioner of the Patent Office or by way of judicial action. To correct inventorship, a showing must be made that the mistake was made without any deceptive intent.

Failing to name an inventor or naming one incorrectly, if committed with deceptive intent, can render a patent invalid. Additionally, failing to name an inventor can place into question the patent owner's ability to enforce the patent or to transfer rights in the patent to others. Ethicon v. U.S. Surgical provides an illustrative example. In that case, one of the co-inventors was not named as an inventor on the patent. The default rule is that all co-inventors jointly possess undivided ownership of a patent, and, thus, each co-inventor ordinarily has the right to license others to practice the patent. Of course, where all co-inventors assign their rights, the assignee (for instance, a university) maintains exclusive ownership of the patent and possesses the sole right to grant licenses. (In most cases, university employees are under a duty to assign their patent rights to the university.)

In Ethicon, the patent owner, Ethicon, brought suit against U.S. Surgical for infringement. However, U.S. Surgical discovered a co-inventor who had not been named on the patent and successfully petitioned the court to have him added as an inventor (i.e., to correct inventorship). U.S. Surgical then obtained a license to the patent from this co-inventor. The court held that the license obtained by U.S. Surgical from the third-party co-inventor defeated the suit for patent infringement, since U.S. Surgical had obtained a legal right to practice the patent, and dismissed the case. The appeals court affirmed this determination.

In light of cases such as Ethicon, all those involved in the process of applying for and procuring a patent must take care to ensure that all of the correct inventors (and only the correct inventors) are named.

Pitfalls in the University Context

University technology managers face a number of significant obstacles to the proper naming of inventors. First, patentable ideas often stem from scholarly papers or articles, on which authors may be listed whose contributions do not meet the standards for inventorship under applicable patent law.

Where the invention disclosure form lists as inventors all those who authored a particular paper, further investigation is necessary to determine which of the authors is properly an inventor, and, in some cases, whether there may be additional individuals not listed on the paper who should also be named as inventors (for instance, the patentable invention may include elements not disclosed in the paper).

Second, the university-research setting, by its very structure, has a tendency to facilitate over- or underinclusive inventorship listings on invention disclosure forms. On the overinclusive side, the authors have encountered two primary problematic scenarios. First, some university laboratories make it their practice to name every member of the research team as an inventor, without inquiring into individual contributions to the subject matter of the patent application. Second, some supervisory personnel feel they should be named as inventors on every patent application stemming from research conducted in their laboratories-because they may have done earlier pioneering work or because they provide overall direction for new developments, bring in funding, or carry out other administrative duties that make research possible. The political climate in a laboratory or other research setting can sometimes make it intimidating for subordinates to challenge supervisory personnel in this regard.

For the reasons outlined above, both of these approaches can lead to difficulties, up to and including outright invalidation of the patent. Moreover, the same result can occur when potentially patentable developments are predicated on proprietary materials obtained from an outside individual and that individual should have been named as an inventor.

Additional problems are possible despite the best of intentions. In some cases, a senior research mentor may conceive of an invention, but lead more junior researchers to it in such a way that they believe they came up with the idea themselves. Although undoubtedly the hallmark of a good teacher, this approach can lead to bitter disputes over inventorship and can make it difficult or impossible for an objective determination of inventorship to be made down the road.

Finally, the job of correctly establishing inventorship is further complicated by economic< considerations. Royalties from patent-licensing activities can provide a significant incentive for obtaining status as an inventor. With regard to the splitting of royalties, different universities and different laboratories often have divergent policies. At one extreme, some universities require that inventions be assigned to the university, with no royalties flowing to the inventors. Most universities, however, apportion licensing revenues in part to the university, but reserve portions for the laboratory and/or the department, as well as the inventors themselves. In a small number of cases, researchers in a particular laboratory or team share royalties without regard to who is ultimately named as an inventor on the patent.

In cases where royalties are awarded to inventors, but not to other members of the research team, competition to be named as an inventor can be fierce, and political battles may ensue. University technology managers typically seek to avoid such political wrangling to retain their objectivity and preserve their working relationships with all parties. In any case, the final word on inventorship is usually left up to the patent attorney prosecuting the application in the patent office. This individual will, more often than not, be an outside lawyer hired by the technology transfer office.

Throughout prosecution of the patent application, the patent attorney keeps tabs on the state of the

claims and how they relate to the contributions made by various individuals. Before the patent issues, the attorney performs a final check to ensure that inventorship is correct. When the allowed claims differ significantly from those filed in the original application, addition or removal of inventors may be necessary. In many cases, however, the inventorship established at the time the patent application is initially drafted will remain consistent throughout prosecution. This will only be true, however, if the information available to the patent attorney responsible for drafting the application is sufficiently detailed and accurate.

Using the Invention Disclosure Form to Avoid Pitfalls

Access to information is the key to the patent attorney's ability to do his or her job well. As noted above, determining inventorship when drafting a patent application is no exception. To facilitate this determination, most technology transfer offices have developed invention disclosure forms, which are filled out by researchers seeking to have their developments patented. These forms generally request a summary of the invention, a suggested title, and a list of inventors. The forms may also request information about financial support for the work that led to the invention, potential for commercial exploitation of the invention, documentation of conception and reduction to practice of the invention, and other details. In some cases, existing invention disclosure forms create or exacerbate a number of problems.

From a review of the invention disclosure forms used by various research institutions, we identified what we regard as the best practices for avoiding the various pitfalls discussed above. (The review included forms from five leading research universities and three leading hospitals.) A discussion of these practices follows. The analysis should be read in conjunction with the Proposed Invention Disclosure Form at exhibit A.

Explain the Legal Landscape

One of the most prevalent reasons for over- or underinclusive lists of purported inventors is misunderstanding of the legal standards for inventorship under patent law. For instance, as noted above, in some cases the individuals filling out the invention disclosure form may assume that anyone named as an author or investigator on a scholarly paper should be included as an inventor.

To forestall at least some of these mistakes, the invention disclosure form should clearly set out the applicable legal standards for inventorship under patent law. It should also explain that the information provided on the form will not be dispositive with regard to the inventors listed on the application, and that, moreover, changes to the list of inventors may be made during prosecution of the patent if necessitated by adjustments in claim scope. The explanation should be placed prominently at the top of the page. (In some cases, the authors found invention disclosure forms with explanations attached on separate sheets, effectively creating a "small print" that probably goes unread most of the time.) An illustrative example is shown at section 1 of exhibit A.

Use a Term Other than Inventor

Some invention disclosure forms request a list of inventors. This designation can lead to confusion, because it gives the individual filling out the form the expectation that all those listed will indeed become inventors on the patent. Other invention disclosure forms use the term investigators rather than inventors. This is a better approach, but could still lead to confusion among academics who associate the title of investigator on scholarly papers with the title of inventor on patents. We suggest instead using the word contributor, or some similar, neutral term. An illustrative example is shown at section 4 of exhibit A.

Moreover, it is important to establish the contributions made by each individual, along with any written documentation of such contributions. The form should explicitly request such information to aid the patent attorney in determining inventorship at each step of the patent-prosecution process. Such written documentation will also help establish dates of invention.

Finally, the form should explicitly ask whether the potentially patentable developments were predicated on proprietary materials obtained from an outside individual, because, in some cases, that individual will have to be named as an inventor. While the final determination will be left to the discretion of the patent attorney applying the patent law of inventorship, the information must be gathered up-front.

Do Not Request Names of Supervisors, Laboratory Heads, or Department Chairs

Almost all invention disclosure forms request information about supervisors, laboratory heads, or department chairs. This practice invites problems by listing individuals on the form who may not have contributed materially to the conception of the invention. If the identity of the supervisory individual is relevant, he or she will be listed as a contributor.

To the extent information on supervisors is necessary for purposes other than determining inventorship, it should be requested on a separate sheet clearly labeled as being for administrative purposes only-not relevant to determining inventorship or some similar designation. The same is true of any sponsorships, funding sources, etc., that are relevant to the research in question. An illustrative example is shown at exhibit B.

Blame the Lawyers

The relationship between university technology managers and the university's scientists can sometimes be strained, especially when outside rules and regulations (such as the patent law definition of inventorship) are being imposed. To mitigate tension, it should be clear that the inventorship determination is being made not by the technology transfer office, but by the patent attorneys hired to prosecute patent applications for the university. This is a legal determination, which must be made correctly to ensure validity of the patent, and, in this one instance, it is okay to blame the lawyers. The invention disclosure form should clearly indicate that the patent attorneys are in charge of the inventorship determination, and contributors with questions should be directed to the attorneys rather than to the university technology managers.

Conclusion

This paper sets out some of the problems encountered by university technology managers and patent attorneys in determining inventorship in the university context. It suggests some solutions to these problems through the use of an improved and streamlined invention disclosure form. This form, and the accompanying commentary in this paper, obviously do not represent an exhaustive solution to all possible problems, but they do address the most common issues to arise and provide a starting point for any further modifications that may be necessary.

Exhibit A

Sample Invention Disclosure Form

1. Explanation of Legal Standards for Inventorship under Patent Law

Under United States patent law, an inventor is one who makes a material contribution to the subject matter of at least one claim of the patent. Since the scope of the patent claims is not determined until the end of the patentprosecution process, a definitive determination of inventorship is not possible when the process is initiated, for example, by filling out this form. Thus, this form does not request a list of inventors, for that would call for a legal determination and prediction. Rather, this form requests instead a list of those individuals who contributed materially to what you consider the novel and nonobvious aspects of the invention or development described herein. You should understand that the final determination of who to list as inventors, both on any patent application which is filed based on this invention disclosure and on any patent that ultimately issues, will be made by a patent attorney applying the legal standards of inventorship under United States patent law.

2. Title of Invention

3. Detailed Description of Invention/Improvements over Prior Art

4. Contributors

Our patent attorneys have asked that you provide the following information: A brief description of the contributions made by each contributor, along with citations to written documentation (e.g., lab notebooks) corroborating the date or approximate date those contributions were made. The attorneys have also asked that you attach photocopies of all such written documentation to this form. Additional listings of contributors may be attached to this form if necessary.

Name/Address/Phone

Contributions to the Invention

Written Documentation

5. Use of Proprietary Materials

Please indicate below whether any aspect of the invention is predicated on, or was made possible by use of, proprietary materials obtained from an outside individual or institution.

Today's Date

Authors' Note: The invention disclosure form may ask for additional important information, such as whether the invention has been disclosed, published, or offered for sale. However, because this sample form is directed solely to issues of contribution and inventorship, only questions pertaining to those issues are included here. See exhibit B for possible additional questions not relevant to inventorship.

Exhibit B

Sample Invention Disclosure Form

1. Explanation of Legal Standards for Inventorship under Patent Law

(Administrative page, not relevant to inventorship)

1. Funding and Support

Please indicate below whether the invention was supported by any grants, gifts, or contracts, including award numbers, time periods, and other relevant details.

2. Supervisory/Departmental Information

Please indicate below the supervisor for this project, the departments within which the work was done and any laboratories that participated.

3. Commercial Potential

Please indicate below whether the invention has commercial potential, including the possible uses and markets for the invention, who would use it and why, the current corporations and/or institutions that might have an interest, and any specific contacts you have in this regard.