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Patent Pending Made Simple is a podcast for inventors who are looking to learn more about the patent process
Hello and welcome to the Patent
Pending Made Simple podcast.
I'm your host, Summer Shaw, and
with me today is Jamie Brophy.
Jamie, how are you?
Hi, Summer.
I'm good.
How are you?
I am doing well.
I feel like we haven't
recorded in a while.
I have been sick and just on
the road to recovery, so I'm
glad to be back at this again.
Yeah.
Me too.
I think we have an interesting,
helpful topic today.
Hopefully our listeners
will find it interesting.
I hope so this is the one that always
makes me more nervous than maybe
some of the other topics we've talked
about and that is Inventorship.
This seems like a pretty
straightforward topic on the surface,
But it can be quite complicated.
So do you want to set us up in
terms of, what is an inventor
and why does the pen office care?
Yeah, sure.
So yeah, we've been getting some questions
from clients about who should be included
as inventors on their application.
And I think.
In general, it's anybody that helped to
come up with the idea behind your patents.
And specifically anybody that
helped come up with the idea
that is written in the claims.
If anybody helped just, Reduce
to practice the invention.
If you hired, an engineer to help you make
a prototype or help you with the drawings,
that doesn't really count as an inventor.
'cause they didn't really
help with the idea.
They just helped you, make the
prototype based on your idea.
So I think, what do you think Summer?
Does that about cover it?
That's right.
Yeah.
The roots of this, I think goes
back to when the patent statutes
were codified in our legislation.
And there was this belief that,
individuals invent things.
And actually that decision and legislation
has created all sorts of new issues.
As AI ends up doing more things
and maybe ends up doing more of
the inventive and conception work.
So it is interesting, but a lot of the
groundwork was laid in the first patent
act that Individuals are considered
to have invented something in And we
want to give credit and we want to list
the people who have conceived of the
invention and come up with the invention.
And that is in some ways
unique to the United States.
Foreign countries are
less interested sometimes.
So in the U S the, all the right to
an invention initially belongs to
the inventor and then the inventor
has to give that right to a company
if it in fact belongs to a company.
In many of the European jurisdictions
in many countries around the world.
It is assumed that a company
owns the invention and all the
rights kind of stem from, or are
presumed to belong to the company.
And then inventors are only
playing a small role in that.
So it doesn't quite, the chain of
title doesn't flow in exactly the
same way in other countries as it
does here in the U S which is nice.
Yeah that's interesting.
That's a good point.
Yeah, if you're, working for a company
and that company decides to file a
patent application based on some work
that you did, that intellectual property
belongs to the company you work for.
I had a situation one time where An
inventor came to us, wanted to file
a patent application, and as I dug
a little deeper into it, I found out
that he came up with this idea while
he was working for a company, and
he was upset that the company didn't
file a patent application on it,
and he wanted to file it on his own.
So it got a little murky
because I was, telling him.
I don't think this belongs to you.
This intellectual property
does not belong to you.
You came up with this while you
were employed by this company.
So it got a little messy there.
Yeah.
And I think that kind of gets to the
root of this issue is, ultimately this
is not just a theoretical exercise to
figure out who did what but really because
of the way the chain of title flows in
the United States identifying what the
responsibilities of the co inventors are.
Is important.
So from a legal perspective, the
way that it works is in the U.
S.
The person who came up with the
invention is presumed to have also
ownership of the invention unless there
are some countervailing circumstances
or contracts to the contrary.
And the biggest one is usually
your employment agreement, right?
When take a job somewhere.
You're usually signing pieces of paper.
Sometimes you're signing
20, 30 pieces of paper.
Some of these contracts can be very
long and sometimes they co op or
incorporate like an employee handbook,
which could be hundreds of pages long.
And you have, you, And whatever you sign
in the contract it actually governs the
day and most employment contract will
say that if you have invented something
during the course of your employment
and during the normal course of your
responsibilities in this job, then
that invention, whatever you invented
actually belongs to the company.
And that's why That's why it's
important to read your employment
agreement carefully, understand what
your IP obligations are and really
figure that out because I've seen
it be done a hundred different ways.
Sometimes the employer will say anything
that you invented that is part of your
kind of daily job during the part of
like during business hours while you're
employed will belong to the company.
Other employment contracts are very
draconian, I would call them because
they're like, Hey, anything you
invent while you're employed with
this company belongs to the company.
Regardless of whether it's related
to your employment and related
to your job function or what time
of day that you came, like you
used your time and resources.
So you have to be very careful and look at
that as a starting point of this analysis.
Wow.
Yeah.
So a company could own anything you came
up with while you were working for them.
That's.
Crazy.
Yeah.
Most states actually have
laws against that, right?
So you can write and a contract
that broad But not all states.
So there are some exceptions You
know, California tends to be pretty
protective of employees so most
Contracts signed in California, for
example won't have language that
broad But there are other states where
there are not a lot of restrictions
on what you can put in that contract.
And some companies will
take advantage of that.
Wow.
Okay.
Summer, what about our
independent inventors?
And specifically, what if there's
a question Where, they're not sure
who exactly came up with the idea,
or they don't know what's going to
end up being in the claims, and the
inventorship is maybe a little murky.
What should they do in that situation?
Yeah, so on a technical level,
inventorship is a claim by claim analysis.
It is possible that somebody came up with
one claim, but an additional person came
up with a dependent claim or a different
claim all within the same patent document.
So the correct way or the
right way to do this is to go
claim element by claim element.
So look at your first independent
claim, look at all the elements of
it and ask yourself, who came up
with this, who came up with this, who
came up with this and make a list.
And everyone who came up with that or
conceived of it and come up with, I
guess I use it interchangeably with
conception, which is what the law
requires, but whoever conceived of
these ideas is considered an inventor
on that claim element or on that claim.
And Jamie, I don't know if that's helpful
or if we need to distinguish between a
conception and reduction to practice.
Yeah, I think it's
worth bringing up again.
Yeah, as we talked about at the
beginning, like the idea, the
conception of the invention is
different than reducing it to practice.
You want to go into that in
a little more detail, Summer?
Yeah, maybe that would be helpful because,
um, the line between the two can get a
little blurry and messy sometimes, right?
Maybe, could you give some examples
of what conception may look like and
what reduction practice may look like?
Yeah.
You could have an idea for some
kind of product and then, you're
solving a certain problem.
You come up with an idea for a product and
during the process of making a prototype
or making the product, you need help
with Models or drawings or, whatever.
So you're taking your idea and
reducing it to practice, like
making an actual product out of it.
And then, that what you have in
your mind might change a little bit
during that reduction to practice.
Some.
things might end up being different
shapes or different sizes or, a
different arrangement things like that.
What would you like to add to that Summer?
Yeah, no, I think that's very good.
The reality is that it's
very complicated, right?
When you zoom all the way in, it's
I remember in law school, like we
had a whole month devoted to like
conception and reduction practice.
In our like semester
long class on patents.
And those were the questions
that like tripped everyone up.
And they were great questions
for a law school exam.
It's okay, you came up with this,
but then this part was changed
during the manufacturing process.
And the manufacturer suggested that.
You change it because it'd be
cheaper to make it this way.
Is that conception or is
that a reduction in practice?
And law students in training
or patent attorneys in training
would get that wrong all the time.
So it's actually a really complicated
inquiry and I would recommend that the
folks watching or listening at home
try not to do this on your own because
it's pretty complicated and requires a
nuance thinking about what is conception
and what is reduction to practice.
If you are splitting hairs about this
thing, I would say go talk to a patent
attorney or a patent agent about this.
They'll help you sort that
out because it's not something
that I would self diagnose on.
Yeah, definitely.
And, I think in general, a more
broad piece of advice is to include
The include inventors, if you, if
it's questionable you don't want
the inventorship to be an issue.
If your patent ever comes into question,
if you ever have to go through some
kind of litigation or, infringement
issue, you don't want the inventorship
to be the thing that takes you down.
So I think in general, it's
a good idea to include.
Anybody that you think might be
an inventor as we were discussing
earlier before this call summer,
sometimes that gets a little difficult
because you would, then want.
Some of the inventors to assign their
rights to the company or your company
or you know Whatever that may be and
some inventors might be reluctant
to do that So but I think in general
it's a good idea to include inventors
if there's a question about it.
What do you think summer?
Yeah, I think that's a really good
advice and the reason you want to be
conservative here is like you mentioned
Jamie the stakes are so high If you
get this wrong Your patent can be
invalidated or that's grounds for
invalidating the patent down the road.
And the way that it practically happens
in litigation is that, let's say you're
trying to sue somebody on your patent, and
they're going to try to defend themselves,
and one way they can defend themselves is
by saying actually, your patent is invalid
because you didn't list all the inventors.
And they'll go and try to find
other people who might have
contributed to this invention.
Who may be unhappy about the fact that
they were left off the document or believe
they have some rights to the invention
and were stiffed out of that money.
So they'll go find people who are
motivated to testify against this, right?
And who will come and testify and
say that actually I helped conceive
of the idea or this part of the
idea, but I was never listed.
And that's grounds for invalidating
the patent and it's an appropriate
way to defend yourself if you
find yourself in a patent lawsuit.
So that's the way it happens practically.
Your patent could also be invalidated
for listing too many people, right?
That's possible too.
But in practice, I have never
seen that happen, right?
I've never seen somebody testify
in open court and say this ban
should be invalidated because
they should not have listed me.
It just doesn't happen that way.
It's just part of the human process.
Usually those who were listed as co
inventors are proud of the fact that
they helped conceive of this idea made
a difference in the world, or maybe
they're even earning some royalties on it.
They're less motivated to try
to testify against the patent.
So that's the reason we try to be over
inclusive is, if we think somebody
help co conceive of this invention or a
part thereof, then we should list them.
And I think that's the right thing
to do because especially if you don't
have all the data, ideally in an
ideal world, you'll have all the data
and you'll make the right decision.
But if you are not sure I think
listing somebody is a good idea.
Yeah, definitely.
So yeah, I think that covers
everything for inventorship.
Do you have anything else to add Summer?
No, I don't think so.
I will say one more thing.
We, you touched upon this Jamie
but as soon as you list somebody
as a co inventor it triggers all
sorts of other obligations, right?
They have a joint and equal ownership.
In our United States legal system
every inventor has joint and
equal ownership of a patent.
Everybody owns a patent.
That 100 percent of the patent is
that how you should think about it.
So as soon as you have multiple inventors
in place, you need to start thinking
about who actually owns the patent, right?
Or who's going to make
decisions about this patent.
So that's going to trigger additional
obligation and maybe some contracts.
or some additional paperwork
at the patent office about
ownership and things like that.
Those are things that you need to start
thinking about once you solve the or
answer the question of inventorship.
Yeah, good point.
And that brings up one other
thing that I wanted to mention.
From my point of view, when I'm
preparing a patent application,
we typically ask the client who
should be listed as an inventor.
And when I prepare the patent application,
before we file the patent application,
I like to get approval from all of the
inventors on the patent application,
before we file it, everybody has to sign
a declaration that goes into the patent
application and that declaration, part
of that declaration is that they've.
reviewed the application and
they understand what's in it.
If you're going to list somebody
as an inventor, hopefully they're
available during the filing
process and can review those things.
Yeah, that's a really good point.
Every inventor has to attest that
this is in fact a true and correct
invention that they have invented.
And it's hard to do that if you
haven't read the pen application.
So yeah, that's a really
good point, Jamie.
Yeah.
Okay.
I think that's it for our
episode about inventorship.
Thanks Summer.
Yeah.
Thank you, Jamie.
I think this was hopefully interesting.
This is the one that gives me concern
all the time because it's such a
clear error if you don't get it
right that, it's, and it's really
problematic, the stakes are pretty high.
So I hope this was helpful to everyone.
And I think that's all we've got.
So we'll hopefully see
everyone on the next episode.