A former employee sues company for patent infringement. This is the scenario that led to Beriont v. GTE Laboratories, Inc., No. 2014-1424 (Fed. Cir. Feb. 4, 2105) (nonprecedential). In Beriont, the Federal Circuit affirmed a district court decision that Beriont could not meet his burden of demonstrating, by clear and convincing evidence, that fellow employee Bellows was not a co-inventor. Bellows was listed as an inventor on the patent-in-question and assigned his rights in the invention to GTE Laboratories. Beriont sought to prove that Bellows was not a co-inventor, but could only present his own testimony as evidence. Bellow's testimony proved insufficient as evidence for both the district court and the Federal Circuit.
While the Federal Circuit dispatched Beriont's appeal rather easily,Beriont serves as a reminder to intellectual property owners regarding the importance of establishing records of inventorship. As set forth by the USPTO, to be considered an inventor, one must contribute to the "conception of the invention." MPEP §2137.01(I). However, "[i]n arriving at ... conception [the inventor] may consider and adopt ideas and materials derived from many sources ... [such as] a suggestion from an employee, or hired consultant ... so long as he maintains intellectual domination of the work of making the invention down to the successful testing, selecting or rejecting as he goes...even if such suggestion [or material] proves to be the key that unlocks his problem." Id. at III (quoting Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965)).
Given the fact specific inquiry regarding inventorship, what can an intellectual property owner do to minimize its risk and solidify its claim to ownership?
- Establish an Assignment Agreement with All Potential Inventors
An intellectual property owner should establish an obligation to assign property rights before an assignor-inventor has an opportunity to develop any invention worth patenting. An obligation to assign property rights will clarify an intellectual property owner's rights and allow the intellectual property owner to apply for a patent. MPEP §409.05. Intellectual property owners can establish the obligation by requiring assignment as a condition of employment in an employment agreement. If an intellectual property owner has failed to create an obligation in an employment contract, the intellectual property owner might seek to request the assignor-inventor sign an intellectual property assignment agreement as a condition of their continued employment. However, some state laws can present issues without further consideration being offered to the employee. Thus, in seeking to correct one problem, care must be taken to avoid creating a second. Often intellectual property owners reflexively require many, if not all, of their employees to sign intellectual property agreements, from creative team members and management, potentially down to sales and marketing staffs. This is typically done at the time of employment, thus obviating much of the issue.
- Maintain Daily Records
Though the need for setting a date certain for conception and reduction to practice has been ameliorated by the America Invents Act (AIA), maintaining records of inventorship remains important. It is good practice for companies to require certain employees to maintain diaries or log books where they record thoughts and actions of day to day work. This is particularly true in an R&D environment where thoughts and ideas are sparked through conversations with personnel who are often working on completely unrelated tasks. In such environments, not only will the intellectual property owner not know in advance what the patentable idea might be, often they will not be able to forecast the personnel who collaborate to identify it.
Should they prove necessary, these records can be offered as evidence to demonstrate the time, date, and extent of inventorship. Furthermore, by being consistent and maintaining accurate records of all the work assignor-inventors do rather than documenting only the patented invention at issue, these records can be used to corroborate or disprove any testimonial evidence in a scenario such as occurred in Beriont.
Maintaining records is generally as simple as utilizing standard inventor/engineering notebooks and periodically having a supervisor review and acknowledge them. These notebooks also serve to document progression and development of ideas. As an idea develops, often new incremental inventions are added. For those who develop software, a notebook might be unrealistic. Instead, revision control software and logs of developers interacting with the code can achieve much the same purpose.
- Maintain Secrecy when Possible
Revealing an invention to others can lead to confusion regarding inventorship. While the issues associated with discussing project details internally with other employees can typically be addressed with appropriate record keeping, discussion outside of the company or research group can lead to theft of the idea or even an invalidating disclosure. The classic scenario is in the academic arena where professors and scientists operate in a "publish or perish" atmosphere. Though the AIA provides for derivation procedures in the event someone appropriates the invention of another, the costs far exceed simply maintaining secrecy until filing a patent application. Thus, non-disclosure until filing remains the best policy.
- Sign Non-Disclosure Agreements
Even in the R&D scenario described above, many companies engage a variety of outside contractors and other vendors to assist in certain projects and help find specific solutions to problems in a project. Therefore, when secrecy cannot be maintained, companies and inventors should insist that those they share ideas with sign a non-disclosure agreement. These agreements should contain sufficient detail to show what was shared and when it was shared as well as confirm ownership of the IP related to the disclosure and the activities which follow from the disclosure.
- Identify all Contributors
Inventors are not always apparent when a patent disclosure is first developed, whether submitted to in-house or outside counsel. To avoid failing to include inventors, counsel, as well as the managers and individual inventors should seek out and identify the contributions of all people involved. The list of inventors should be limited to those who meet the standard of contributing the conception of the invention. Though involved in the overall process, those who only perform routine experimentation or other routine activities are not typically considered inventors. Once all contributors are determined, an intellectual property owner should file a patent application listing all of the contributors to the disclosure as inventors. The reason for this is two-fold. First, it will be easier to remove inventors than to add inventors during prosecution. Second, this sets the field for all inventors the company needs to procure express assignments from for recording at the USPTO, hopefully eliminating the possibility of an unnamed inventor having not assigned his or her rights in the patent.
- Revisit Inventorship at Major Points in Prosecution
As the invention becomes defined by claimed subject matter, the claimed subject matter must guide counsel in adjusting the named inventors. Thus, there are several points during prosecution where the inventors may change (e.g., restriction, major amendments, allowance etc.). At each of these points, intellectual property owners should determine whether a named inventor's contribution has been removed, requiring the inventor be removed from the application. Additionally, these points provide a good opportunity to review the claim elements to determine if any element is attributable to an inventor that has been previously missed.
By making a habit of these activities, intellectual property owners can feel confident in knowing they will have little trouble protecting their intellectual property from Beriont-type challenges.