Inventors and Inventions

Deciding who should be listed as an inventor on a patent application can be challenging and contentious, especially for those used to working in highly collaborative R&D environments. Understanding the concepts of inventorship and ownership of IP is key to creating clear rights.

In many cases, the inventorship of an invention is clear, but this is not always the case. The identity of the true inventor or inventors of an invention can become less clear when more than one person is involved in a project, whether these are other members of a team, those with whom you’ve discussed aspects of the work or people who may have helped to test the invention for example. So, how do you know who is or are the true inventor(s) of an invention?

It is important to remember that inventorship is not the same as authorship of an academic paper, in which anyone who contributed data or discussion points might be considered to be a co-author. Designation of the inventor or inventors is not in the gift of the project manager or head of department for example.

For the purposes of a UK patent, the inventor is considered to be the “actual devisor of the invention”[1]. This, in turn, is considered to be the person or persons who conceived the “inventive concept” behind the invention.

This means that we can exclude certain categories of people as inventors, for example, those who:

• funded the research program leading to the invention;
• simply set the task of finding a solution to a certain problem that lead to the invention, without any input to the solution.
• someone who simply participated in discussions or meetings as part of the project but did not actually conceive the inventive concept would not be considered an inventor.

Those who conceived of the inventive concept might include, for example, someone who:

• clearly conceived the original idea,
• identified a significant result and realised the implications, leading to the invention; or
• overcame a significant technical problem in bringing the invention to fruition. On the other hand, individuals who simply carried out routine testing as part of the project, even if this was technically demanding, would not be considered an inventor because they did not conceive the inventive concept.

Of course, there may be more than one inventor listed on a patent. This might be because there was more than one inventive concept involved or perhaps because the second inventor conceived a new embodiment of the invention or solved an important problem in bringing the invention to fruition.

So, aside from being recognised as the inventor of an important technical advance, why is inventorship so important? Largely, this is because, with certain exceptions, such as employee inventions (discussed below), any patent for the invention will be granted to the inventor[2]. In other words, the inventor will be the owner of the granted patent and will have all the associated rights, the most important of which is to exclude others from carrying out the invention and, of course, the right to license others to carry out the invention and of course the right to license others to carry out the invention.

In certain countries, for example, the US, incorrect inventorship can be a reason for the patent to be found invalid and, therefore, unenforceable.

There are, however,  key differences where a patent is co-owned. Where a UK patent is co-owned, co-owners of a patent will own an equal undivided share in it, can exploit the invention for their own benefit without the consent of the other co-owners and have no need to account to the other owners. However, a co-owner cannot amend the specification of the patent, apply for the patent to be revoked or grant a licence under the patent, assign it or mortgage a share in it[3]. It is important to note that this arrangement is not the case in all jurisdictions. For example, in the US, each co-owner has the right to grant licenses independently of the other owners, and this can be an issue when co-owners are not commercially aligned. There are a number of ways to avoid pitfalls in this area, for example, through an agreement between co-owners setting out how the co-owned rights will be exploited.

One common case where the patent will not be granted to the inventor is where the inventor is an employee, and the invention was made in the course of their usual duties. In this case, the invention will normally belong to the inventor’s employer[4]. This might be the case if the employee is a researcher or an engineer whose job it is to devise new products or if the employee has been given special duties from which an invention might reasonably be expected to arise. In some cases, the patent may also be granted to the employer if the employee inventor had a special obligation to further the interests of the employer. In these circumstances, whilst the inventor will be named on the patent (although they may decline to be mentioned), the rights in the invention belong to the employer. Most employment contracts include language assigning any inventions made during the course of employment to the employer.

A second case in which an invention may belong to a third party is where the inventor (or the inventor’s employer) has contracted with a third party to that effect. This is particularly common in the context of research collaboration agreements where the ownership of IP derived from the collaboration (foreground IP) is pre-agreed. In this case, inventions made by employees of one party to the agreement will belong to that party but may be assigned to the other party depending on the terms of the agreement. A further common example is the use of contract research organisations (CROs), in which the client usually requires that any inventions made in the context of the contracted work be assigned to them. In this case, inventions made by employees of the CRO typically belong to the CRO in the first instance but will be assigned by the CRO to the client.

The rights in a patent may, therefore, stay with an inventor or flow to their employer or from the employer to a third party, depending on the circumstances of the invention.

If you are involved with the drafting of a patent application, make sure to provide all facts to your patent attorney so that a complete inventorship determination can be made.  If you would like to discuss any of the issues raised here or any other IP matters, please contact us at mail@stratagemipm.co.uk.

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[1] s7(3) Patents Act 1977

[2] s7 Patents Act 1977

[3] s36 Patents Act 1977

[4] s39 Patents Act 1977