Righting Inventorship Wrongs?A Multijurisdictional Overview

AuthorTodd M. Martin - Pervin Taleyarkhan
PositionTodd M. Martin is a director and patent and trademark attorney with Eagar & Martin Pty Ltd in Queensland, Australia. Pervin Taleyarkhan is an associate legal counsel for patents with Whirlpool Corporation in Benton Harbor, Michigan.
Published in Landslide® magazine, Volume 10, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This
information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Meeting of the Minds
Inventorship is a small but critical
aspect of a patent application. The
inventorship on a patent application
can (depending on both the territory
in which patent protection is sought
and when the application for patent
was led) dene who qualies as the
owner of any resulting patent(s). Incor-
rect inventorship can render the patent
unenforceable, not to mention the pos-
sible repercussions to those involved in
the drafting/examination, if there are
suspicions. Errors in inventorship can
be discovered at any time: the initial l-
ing stage, during the examination stage,
and even after the patent has issued.
Although errors in inventorship can
usually be corrected, these errors can
affect how and whether the patent can
be enforced. Following is a brief survey
of international perspectives on inven-
torship, using the United States and
Australia as examples.
US Practice
Inventorship Is the First Consideration
Procedurally, a US application for pat-
ent must include the name(s) of the
inventor(s). This requirement traces its
roots back to the United States Con-
stitution, which grants to Congress
the power to “promote the Progress
of Science and useful Arts, by secur-
ing for limited Times to ... Inventors
the exclusive Right to their respec-
tive ... discoveries.1 Inventorship is
dened as simply the list of individu-
als in the ofcial documents led with
the application (including those listed
on the application data sheet and/or
the inventor’s oath or declaration).2 To
be properly characterized as an inven-
tor, United States patent law requires
that the individual have contributed
to the “conception” of the invention.
“Conception has been dened as ‘the
complete performance of the mental
part of the inventive act’ and it is ‘the
formation in the mind of the inven-
tor of a denite and permanent idea of
the complete and operative invention
as it is thereafter to be applied in prac-
tice.’”3 Further, it is those who, per the
facts of a particular situation, made a
conceptual contribution to the inven-
tion as claimed who are entitled to be
inventors on a patent.4 This is true even
though each joint inventor need not
have made a contribution to each and
every claim to be properly named as an
inventor.5 In addition, “[c]o-inventors
need not ‘physically work together or
at the same time,’ ‘make the same type
or amount of contribution,’ or ‘make
a contribution to the subject matter of
every claim of the patent.’”6
The process of identifying an inven-
tor is therefore very fact specic and
can change during the course of prose-
cution of a patent application.
Ownership of (vs. Inventorship in) a
Patent and a Patent Application
Inventorship and ownership in a patent
and patent application are treated as “sepa-
rate issues.”7 “Ownership of a patent gives
the patent owner the right to exclude oth-
ers from making, using, offering for sale,
selling, or importing into the United States
the invention claimed in the patent.”8 “For
[patent] applications led on or after Sep-
tember16, 2012, the original applicant
is presumed to be the initial owner of an
application for an original patent. For
applications led before September16,
2012, the ownership of the patent (or the
application for the patent) initially vests
in the named inventors of the invention of
the patent.”9 An owner of a patent or patent
application can transfer ownership interests
by properly assigning the patent or patent
application. “In order for an assignment
to take place, the transfer to another must
include the entirety of the bundle of rights
that is associated with the ownership inter-
est, i.e., all of the bundle of rights that are
inherent in the right, title and interest in the
patent or patent application.”10
The owner of a patent application may
in turn transfer certain rights that are less
than the entire ownership interest of a pat-
ent. “An exclusive license may be granted
by the patent owner to a licensee” in
which the exclusive licensee can prevent
others, including the patent owner, “from
competing with the exclusive licensee,
as to the geographic region, the length of
time, and/or the eld of use, set forth in
the license agreement.”11
Who Gets to Enforce the Patent?
Under US law, in order to bring a law-
suit for infringement, one of the rst
requirements is that the plaintiff have
standing to sue the alleged infringer (i.e.,
that the plaintiff is procedurally permit-
ted to bring this lawsuit). The “Patent
Act12 governs standing to sue for [pat-
ent] infringement, and it provides that
only the patentee and his successors in
title are entitled to bring a civil action for
infringement.”13 Further, “[a] party is a
patentee if it holds legal title to the pat-
ent, either by issuance or assignment.”14
However, as held in a 2014 court rul-
ing, even though one may not be the
patentee, the right to sue may still be
transferred to a licensee if “all rights or
all substantial rights” in the patent have
been transferred via the license.15
Consequences of Incorrect
As seen above, inventorship plays a critical
role in a patent application. This includes
identifying the initial owners (and thus the
Todd M. Martin is a director and patent and trademark attorney with Eagar & Martin Pty
Ltd in Queensland, Australia. Pervin Taleyarkhan is an associate legal counsel for patents
with Whirlpool Corporation in Benton Harbor, Michigan.
By Todd M. Martin and Pervin Taleyarkhan
Righting Inventorship Wrongs:
A Multijurisdictional Overview

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