Australia: Who is an Inventor and Why Should I Care?

Last Updated: 11 November 2012
Article by Jack Redfern and Phil Burns

The Quick Answers:

Who as an inventor?: Any person or persons who have made 'an invention'

Why should I care? Because A) you could be forced to share ownership of an invention with another party or competitor, or worse B) you could lose all rights to an invention entirely if the listed inventorship is incorrect.

But, of course, you know that there really are no quick answers to many questions involving the law..... Read on to learn more.......

Who is an Inventor?

On the world stage that is the Patent System, in all its various incarnations around the world, there is no more vital yet misunderstood character as the 'inventor'. The inventor, at the most simplistic level, invents solutions to the problems of mankind, whether mankind knew there was a problem or not. It is the inventor who is the cornerstone of the patent system - the inventor 'invents' solutions in return for a monopoly on the sale or use of that solution to society for a limited time period (20 years), after which the invention is gifted to society for all to use or exploit as they see fit. Yet one of the most contentious issues in the patent system is that of "who is the inventor?". There are literally hundreds of examples in the court systems around the world of legal proceedings asking this exact question. How many times have you seen a cool new gadget or idea and thought "Hey that was my idea!". That may well be the case, you may have thought of a solution to a problem, but did you come to a complete understanding in your mind of all aspects of that solution and the interactions of all the component parts working in harmony? And lastly did you do anything about it? Did you conduct experiments to see if your solution was viable? Did you write articles discussing your solution? Did you go to a patent attorney and discuss your options for protecting your idea? Did you file a patent application?? One of the fundamental caveats of patent systems which, with new legislation coming into effect in the United States recently, has largely now been harmonised worldwide, is the concept of "first to file" i.e. the first to file a patent application has priority rights to ownership of the invention which is the subject of the claims. The new US legislation, whilst still the same in spirit to that of corresponding provisions in other county's patent laws, specifically recites that the first 'inventor' to file has priority and ownership of the invention. So we expect that it will not be uncommon to see patent litigation in the US with claims that the inventors named on a patent application or patent are not in fact the first inventor, or are an inventor at all. Such cases are not unlike similar legal proceedings in Australia where a third party lays claim to ownership of a patent or patent application on the basis that the named inventor is not, in fact, actually an inventor and therefore has no entitlement to the invention claimed therein or to assign such rights to another party (such as an employer).

So we come back to the 64 million dollar question.....Who is an inventor?

Under Australian patent laws, the term "inventor' is not explicitly defined, but it is generally accepted that an inventor is a person who has made an inventive contribution to at least one claim of a patent application or patent. This generic view is largely consistent with patent laws worldwide. Although there are often differences in the rights any one inventor may have to their invention, the concept of who is actually an inventor does not change much, if at all.

Note that this generally accepted view is made with reference to the claims of the patent application as it is the claims alone in the specification that define the boundaries of the patent rights. Therefore, if a person is properly an inventor of an invention which is described in the patent specification, but not claimed, then that person is not an inventor of the patent application or any resulting patent. Of course, however, if, during prosecution, the claims are amended to claim that previously unclaimed subject matter, then the person does become an inventor in terms of that patent application – and the inventors named in the application should be amended to include this additional inventor.

Therefore, not only is it extremely important to closely consider the named inventors on a patent application at the time the application is filed. Rather, the issue of "who are the named inventors?" should also be considered whenever any amendments are made to the claims to make sure that any person who conceived the substance of any new matter being added to the claims should be added to the patent as an inventor. Conversely, if claims are deleted or if particular subject matter is deleted from a claim in an amendment, a review of the inventors should also be considered to ensure that each of the named inventors has made an inventive contribution to at least one claim of the application after the amendment. If, however, one of the original named inventors was only an inventor of a claim that is subsequently deleted, then that inventor should also be removed from the patent application.

As you might expect, the outcome of any of such reviews of the inventorship may result in a change to who is named on the patent application as an inventor. However, this is necessary as the question of inventorship and "Who is an inventor?" is a legal construct which, if the inventors named in a patent or patent application is in any way incorrect, can cause the patent application and any granted patent rights to subsequently be invalid.

The ways inventorship in terms of a patent application or granted patent can be incorrect include both cases of:

  • Naming persons who are not, in the eyes of the law, inventors –i.e. if they have not made an inventive contribution to at least one claim; and
  • Not naming persons who are inventors.

Therefore it is just as damaging to have too many inventors (i.e. naming persons who are not inventors – whether through respect for a supervisor or a sense of fairness to a researcher who worked on a project) as it is to have not enough (or not naming all of the true inventors).

Who is NOT an Inventor?

Sometimes, the question of "Who is an inventor?" can be made easier by considering the negative question "Who is not an inventor?" and this approach can often at least minimise the pool of possible inventors to make the review and determination of who is an inventor somewhat less onerous.

For example: simply holding the title of 'Head of Department' or 'Project Leader' does not automatically make a person an inventor on a patent application which arises from their department or research group. If such a person only performed a supervisory role and did not contribute to the conception of the invention in its final form (i.e. as it appears in the claims of the patent application), then that person is not an inventor. Also, you are not an inventor if your only contribution was to provide funding to the project from which the invention arose. This will often take care of two large and potentially troublesome classes of possible inventors at the top of the scale, but what about at the other end? Again, you are not an inventor if your only contribution was to reduce the ideas of another to practice using your professional skills without adding any additional substance to the final form of the invention in terms of its conception. Therefore, just working under direction of another to reduce their idea/invention to practice does not count you as an inventor of the final product. To be an inventor, you must also have contributed to the conception of the final form of the product. For example, if the reduction to practice of the original idea does not go according to plan, and the technician/student is required to modify the originally conceived ideas to make the whole thing work, then the technician/student will most likely be a co-inventor and should be named as such on the patent application.

Why Should I Care?

There are a myriad of reasons for making sure the inventors named in a patent application actually are inventors and that no inventor has been omitted from the application. In this, as mentioned above, there are two methods of getting the inventorship of a patent application wrong, either:

  • By incorrectly naming someone who is not, in fact an inventor; and
  • By not naming someone who is, in fact according to the law, an inventor.

In both cases, if an application with possibly incorrect inventors named is eventually granted as a patent, then that granted patent may subsequently be invalidated for incorrectly naming the true inventors and those true inventors only.

Alternatively, if a person who is an inventor is not properly named, then that person (or their employer) may petition the courts to have their name added to the patent. If this were to occur and the newly added inventor is employed by a third party, then that party may become a joint owner of the patent, and thus would acquire equal rights to exploit the invention in the patent without recourse to the other, original owners. For example, the employer of the new inventor would be able to make, use and sell the invention without fear of infringement of the patent. It is wise to be especially cautious of this scenario, particularly if any work on your ideas is sub-contracted to a third party. We make this point since, if the sub-contractor happens to contribute ideas for improvement of your original concept of the invention, either to make it better, or simply to make it work as intended, then that sub-contractor is likely to be an inventor and your rights to the invention will need to be shared either with the sub-contractor or their employer as the case may be. Thus, whenever third parties are involved, it is prudent to ensure that it is agreed at the outset, in writing, who is to own any potential improvements to the invention that may occur during the course of the manufacturing or development contract.

Inventorship Audits

As can be seen in the discussions above, it is extremely important to ensure that the correct inventors are named in any patent application and granted patent.

The good news is that, if an inventor is either incorrectly named or not named, then it is usually a straightforward exercise to have the inventorship corrected, provided that the initial error in the inventorship was an honest mistake and not a result of fraud or intent to incorrectly name the inventors of the application or patent. It can, however, be a costly exercise to make such corrections, particularly if there are many related patent or applications in many countries

Therefore, it is important that you discuss the question of inventorship with your patent attorney very early in the patent application process, preferably before the application is filed, to ensure the correct inventors are named at the outset.

Usually, the identity of anyone who worked on or was involved in a project which resulted in the lodgement of a patent application to protect the useful outcomes of the project is well known. An inventorship audit is the process of determining, from among those who were active in the project, the correct inventors of a patent application or patent. In many cases it falls to an examination of the claims of the patent application as to who conceived the subject matter of that claim. The concept of conceiving the subject matter of the claim in terms of established patent law, is the mental act of forming a complete picture in one's mind as to the final working form of the invention, and does not necessarily relate to the construction of a working prototype of the invention conceived. Of course, this does not exclude the prototype manufacturer from themselves being an inventor i.e. if, in the course of the construction, the design must be modified from the original conceived form in order to make the prototype work as intended, and such modifications are the conceptual manifestation of the manufacturer's ideas to improve or fix the design, then the manufacturer would then be a co-inventor and must be named accordingly.

As you can see, the conception of an invention and the filing of a patent application to secure that invention is only the first step in a minefield of possibilities - you should always consult your patent attorney on matters which may affect the validity and enforceability of the application as early on in the process as possible to avoid any nasty surprises down the track after you have directed many hours of your valuable research time and redirected research funds to the patent application which may ultimately be for nought or the benefit of another party because of a simple error or omission at the start.

If you would like further information on the above or would like to discuss the inventorship of any of your patent applications and/or patents, or would like any help in conducting an inventorship audit of any of your patent applications or granted patents, we would be more than happy to assist.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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