Recently a colleague posed a very important question for businesspeople: is there a remedy if the inventors are missing or listed incorrectly on a United States patent or patent application? To answer this question we must initially take a few steps upstream to understand inventor law.
Inventorship and ownership of a patent or application are not legally equivalent in the United States. The most important difference is that inventorship arises strictly by patent law and cannot be modified by agreement. The inventor conceives the invention in sufficient technical detail, and is generally the person to create the actual tangible invention, be it a method, machine, device or new composition of matter. If push comes to shove, then it is the person who possesses the technically complete concept and then directs third parties to create the prototype who is the legal inventor.
The most straightforward scenario arises in my practice wherein a small business owner presents a device that he or she has conceived and created as a model or technical drawings. This client typically informs me that no third party contributed to the conception or the prototype. Consequently, I prepare a government form, a ‘declaration,’ that requires the signatures of all the inventor or inventors. Typically in my practice the business owner will then sign as the single and sole inventor. If there are other persons who have contributed to the conception and technical development of the invention, then their names are also listed on the declaration as co-inventors.
If all the correct inventors ‘sign off’ then with respect to potential inventorship pitfalls, all will be well. Unfortunately, problems arise if persons are incorrectly listed as inventors on the original declaration. This problem often occurs if the true inventor or inventors designate persons as inventors, but who are exclusively investors, colleagues, relatives or business partners. These persons must qualify as inventors based upon the criteria provided above; otherwise they cannot be rewarded for other kinds of contributions, such as financial, in this manner. If the incorrect designation is not remedied then any resulting patent is invalid and perhaps will be considered fraudulent.
Another scenario occurs whenever a true inventor is omitted from the declaration. This can happen inadvertently, or can occur deliberately if there is a ‘falling out’ between collaborators. For example, there may originally be an accurate and complete designation of the true inventors on the declaration. Thereafter there is a business dispute, and a request to the patent practitioner to remove the ousted business partner from the designated inventors in the patent application or patent. Unless there was an originally inadvertent mistake and the originally designated inventor/business partner was not a true inventor, this is not an option.
If a purported inventor becomes aware of the omission, then he or she must bring this to the attention of the patent practitioner. In fact, there may be a lawsuit purely on this issue, and litigation almost occurred between two of my clients who were initially business partners. The inventorship issue also arises whenever an allegedly infringing party reviews the designated inventorship, in order to invalidate the patent and thereby avoid an infringement award.
© 2011 Adrienne B. Naumann
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