12. The Complexities of Determining Inventorship

Who is an inventor when it comes to a patent? Can there be multiple inventors? What rights do they have? These questions will be answered in this insightful episode of Patent Pending Made Simple, where our hosts, Jamie Brophy and Samar Shah, delve into the intricacies of inventorship claims and their implications in the realm of patent applications and legal protections.

Summary
In this episode, Jamie Brophy and Samar Shah discuss the topic of inventorship. They explain that an inventor is anyone who helped come up with the idea behind a patent and, specifically, anyone who helped come up with the idea written in the claims. They also discuss the importance of understanding inventorship from a legal perspective, as the person who came up with the invention is presumed to have ownership of the invention. They highlight the need to carefully review employment agreements, as many of them state that any inventions made during the course of employment belong to the company. They also discuss the complexities of determining inventorship and the importance of including all potential inventors to avoid future legal issues. Finally, they mention the additional obligations and paperwork that arise when multiple inventors are involved.

Takeaways
An inventor is anyone who helped develop the idea behind a patent, specifically the idea written in the claims.

Understanding inventorship from a legal perspective is important, as the person who invented the invention is presumed to own it.

Employment agreements often state that any inventions made during the course of employment belong to the company, so it is important to review these agreements carefully.

Including all potential inventors is recommended to avoid future legal issues and ensure the patent's validity.

When there are multiple inventors, additional obligations and paperwork regarding ownership may arise.

Chapters
00:00 Understanding Inventorship

02:28 Ownership of Inventions in Different Countries

03:54 Importance of Determining Co-Inventors' Responsibilities

06:44 Analyzing Inventorship on a Claim-by-Claim Basis

10:33 Including Potential Inventors to Avoid Legal Issues

13:23 Additional Obligations and Paperwork with Multiple Inventors

What is Patent Pending Made Simple?

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, Samar Shah, and
with me today is Jamie Brophy.

Jamie, how are you?

Hi, Samar.

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 Samar?

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.

Samar, 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, Samar?

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 Samar?

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 Samar,
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 Samar?

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 Samar?

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 Samar.

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.