Inventorship Disputes

Dr. Rajendra Prasad
25 June 2011

Introduction

Inventorship is a fundamental issue in patent law. Identifying inventorship in a patent application is usually a routine task administered by the lead inventor or an appropriate group of the assignee institutions. With vast majority of patents and patent applications, even where research and development work proceeds through teams of large number of individuals who all have a common obligation to assign the invention to their employer, inventorship is frequently not a concern, and the inventors are identified without conducting an in depth investigation of the nature of the contribution of each "inventor" to the claimed invention. Inventorship disputes, when they occur, are usually surrounded by emotional issues difficult to resolve, and may result in lengthy litigation.

An enquiry into the question of 'inventorship' assumes importance from two angles. Firstly, a justice to patent policy demands that inventorship should be correct for all patents irrespective of the fact that inventio n is commonly assigned. Secondly, the 'inventorship' titles not identified correctly before filing the patent application could lead to a 'muddy' mess that cannot be easily resolved later and the stakes could really be enormous when things go wrong. While patent applications with incorrect 'inventorship' can be corrected in some cases, particularly at the pre-grant prosecution stage relatively easily in many jurisdictions, it must be realized that such applications run the risk of getting eventually invalidated. Many court proceedings are reported, however, where inventorship has been directed to be corrected instead of invalidating the patent.

Indentifying Inventors

The patent statutes almost everywhere require that a patent application be filed only in the name of the inventor or inventors. Section 6(1)a of Indian Patent Act specifies that a patent application be filed by any person claiming to be the 'true and first inventor' of the invention. Ironically, no definition has been provided for the 'true and first inventor' in the Indian Patent Act. It also does not state if two or more persons can apply jointly for a patent as co-inventors while it does have provisions to deal with co-owners of the patent (Section 48 and 50). Nevertheless, occurrence of co-inventors in India is as common as elsewhere in the world; it is believed that of all patent applications globally more than 80% have co-inventors. Inventorship disputes in India are not yet, however, as common as these are abound in US and other jurisdictions of Europe, Australia etc. But there is no doubt that this issue could assume greater significance as the patent filing grows with time in India.

US Patent law is more explicit on the issue of 'co-inventors'; 35 USC § 116 states, 'When an invention is made by two or more persons jointly, they shall apply for a patent jointly and each make the required oath. It further states that inventors may apply for a patent jointly even though: i) they did not physically work together or at the same time; ii) each did not make the same type or amount of contribution; or iii) each did not make a contribution to the subject matter of every claim. This statute also establishes that patent application with erroneous inventorship can be corrected, if any omissions or commissions have been made without any deceptive intention by the applicant.

It must be realized that, in the United States unlike in every other country, only an inventor can apply for a patent (35 USC §111). The EPC also recognizes that there can be more than one inventor on a patent application (Article 59); the rules determining joint inventorship, however, are governed by the national laws in each European member country.

Authorship versus Inventorship

While the terms 'author' and 'inventor' are not synonymous, yet it is generally assumed that the right to inventorship comes automatically if one is a co-author in publication on the subject matter of the patent. Authors of journal articles in the scientific world, however, are typically those who are involved in designing or performing scientific experiments and / or analysing and writing the resulting manuscript. It is also generally granted for recognition of hard work put in by the graduate students and it is also customary to grant first authorship to such graduate students who substantially contribute in designing and carrying out the experimental work in the interest of their career advancement. There is a strong tradition of gifting the authorship in the scientific work for the reasons enumerated above.

In contrast, inventors of subject matter in patents are identified on the basis of their involvement in the original conception of the invention and as per the patent law and the order of inventorship imply nothing. Therefore, inventors in the patent application need not be the same set of people as in scientific publication. The justification of inventorship in a patent application is often linked to the individual contribution leading to the claims in the patent application. In many jurisdictions, the names of proposed co-inventors are also sometimes sought to be removed when claims corresponding to their contributions are not admitted by the Patent Examiner at the prosecution stage. Nonetheless, in many institutions, co-inventorship in a patent is given as much weight as to the first-authored publication in a good scientific journal. This motivates the graduate students and other minor contributors also linked to a project related to the subject matter of the patent on routine tasks to seek inventorship.

While an erroneously identified "inventor" not actually involved in any way in the conception of an invention, or an omitted inventor who should have been named may spell a great deal of the trouble for the patent owner, gifting inventorship by way of courtesy may have serious negative consequences leading up to patent being invalidated. Inventorship is therefore a crucial issue in the patent law in many countries and therefore must be dealt with seriously.

As a practical guide, it is recommended that the inventorship should be determined based on the contribution of conception of invention and reduction to practice by each co-inventor in relation to the claims in the patent. Even though, the claims themselves do not describe the invention, they are basically drafted to distinguish the invention from the prior art and set the boundaries in legal terms to exclude potential infringers. Thus, the claims which lie at the core of a patent should be basis in determining the co-inventors.

Besides risking invalidation of a patent, other unwanted consequences can hurt a patent owner who does not name an inventor. In a real-life example of the patent on transgenic cotton held by Monsanto, it is reported that a university graduate student who contributed to an invention was not named as an inventor while other named inventors assigned the patent to Monsanto. This was discovered by Monsanto's competitor, Aventis, who sought to have her correct the inventorship on the patent and then transfer her rights to the technology to Aventis. She did exactly the same and thus Aventis received the same ownership rights as Monsanto which would have not been possible without a license from Monsanto.

Investigating Inventorship

The responsibility of determining correct inventorship often falls on Patent Attorneys duly qualified in the field related to subject matter of invention, especially when a dispute arises. An appreciable body of knowledge as practical guidelines to conduct such inventorship inquiries exists today. It has been suggested that such inquiries should as far as possible be conducted in writing and the line of questioning be set in a series of 'who', 'what' and 'where' questions to help understand the true nature of invention and respective contribution of potential inventors whether named or not.

The possible 'Who' questions could be - who conceived the invention, who directed the work, who followed directions etc. Similarly, the 'What' questions could be - what was the role of each individual in the invention, what experiments were conducted, what proto-types were developed etc. And similarly, the 'Where' questions could be - where was the invention developed, where are the records of invention, where are the inventors and witnesses etc. In inventorship determination exercise, a 'but for' or a 'material effect' test has also been suggested. In this exercise, one needs to gauge the 'material effect' on the state of invention in absence of the stated contribution of each potential co-inventor. In other words, it requires visualization of the state of invention, 'but for' the contribution of the potential co-inventor. In any case, such findings are advised to be seen together with corroborating evidences of laboratory notebooks, experimental data, reports, technical presentations, etc.

Resolution of Inventorship Disputes vis-à-vis Inventorship Correction

Inventorship disputes are often difficult to resolve satisfactorily because each party involved is usually emotionally charged. Some possible sources of inventorship disputes in different collaborative arrangements are shown below.

Collaborative Arrangement	Inventorship Issue
Academic Collaboration: Graduate Students and Academic Supervisor	Whether the graduate students contributed in some way to the conception of the invention, or merely acted as a pair of hands to carry out the research plan of the PI. In addition, the graduate students leaving the group may join industry and pursue research as extension of their previous work. Care is required to avoid such conflict with clear understanding, preferably in writing.
Academic Collaboration: Between two or more groups headed by Professors of the same department	Such collaborations are usually with no written agreement and enquiry would be required to directed to find nature and significance of contribution each individual or group involved.
Industrial Collaboration: Industry sponsored research carried out by a research group based at university department	Such collaborations are usually with written agreement on assignment in favour of the sponsoring company but most often the question of determining inventorship or a methodology to be adopted for this is ignored. Moreover, industry staffs closely monitor the research progress at the university and are seen as an integral part of the research team. In this scenario, industry may downplay the role of university collaborators as inventor(s).
Industrial Collaboration: Between two or more industries out of necessity	Industrial parties generally proceed to collaborate with an appropriate agreement to avoid possible misgivings. Sometimes, however, the parties conclude the agreement on inventorship and leave out the question of sharing ownership of the patent. When inventorship dispute erupt s due to unforeseen developments on research front, such an agreement puts the question of ownership in jeopardy.
International / Bilateral Collaboration: Between two research groups of Government owned laboratories from different countries	Research cooperation proceeds under an umbrella agreement between the two Governments having a clause on IPR sharing between the two sides in a very broad sense. Sometimes, ownership of IPR between the two bilateral groups is agreed upon in the specific research project for cooperation. But the question of inventorship is generally left open. In fact, the question of involvement of individual scientists is also considered in the context of visit abroad rather than the element of research program and potential IPR resulting there from.

Most patent laws tend to have certain provisions to correct inventorship details. In the US law, correction of inventorship is allowed during the pendency of a patent application and also after a patent has issued provided the patent applicant proves that the omitted person was a true joint inventor or the joint inventor was omitted by error as the case may be and that the omission was without deceptive intent on the part of the inventors. There also is an 'interference' provision in the US law which is sometimes invoked in the context of 'inventorship dispute'. The interference proceedings are directed to identify the party that first invented who is recognized as the true inventor as per US law.

The 'declaration of inventorship' is obligatory in the Indian patent law and the applicant is obliged to furnish correct details on the prescribed form along with the patent application or within a month there from. Further Section 28 of Indian Patent Act provides that a request may be made at the pre-grant stage in the prescribed manner by the applicant or an interested party for mention of the names of relevant individuals as inventors or conversely for removing those names who ought to have been mentioned in a patent application. Such requests are permitted to be made not later than two months after the date of advertisement of acceptance of the complete specifications. The decision of the Controller of Patents in such cases is subject to a judgment (about the inventors and those involved in substantial inventive activity) arrived at through prosecution proceedings including notifications, clarifications, hearings etc. and may take a long time with uncertain outcome.

Arbitration

It has been generally suggested that in resolving inventorship disputes, arbitration by an independent neutral arbitrator having due credibility, knowledge and scientific and legal background relevant to the field of invention tends to me most advantageous and cost-effective. Arbitration is a subtle and quickest way of settling the dispute while a typical court case might take years to close. The parties who usually agree to appoint a mutually acceptable arbitrator are at ease to present their case for inventorship in an organized forum. A scientist arbitrator who understands the technical significance of contributions made by alleged co-inventors tends to make fine distinction between those involved in conception of an idea and those that are simply engaged in reducing to practice.

Conclusion

'The patent owners can change but inventors cannot' is the underlying concept of most patent laws and must be understood well. Simply participation in the reduction of the invention, without contributing in the final conception of the invention, does not make an individual an inventor. Furthermore, an individual involved in reduction of the invention by way of making a proto-type or production process, is not regarded an inventor even if he / she makes changes to the production method while reducing the invention to practice unless the contribution is leading to complete conception. If a person involved in the proto-type development or production process for reduction of the invention to practice contributes a feature resulting into an additional useful purpose leading to an additional specific claim in the invention then that individual is clearly a co-inventor.

Patent savvy organizations and industry should maintain the records of research projects and experimental notebooks tidy and up-to-date and carry out collaborative works under well defined agreements with due regard to patent ownership as well as inventorship details. Most often there is no consideration to inventorship issue and how to resolve disputes on the identity of the correct inventors. A well-drafted scientific collaboration agreement should also contain a dispute resolution mechanism, such as neutral arbitration