It is one thing to get authorship wrong on a manuscript, but it is quite another to get inventorship wrong on a patent. Why? It is true that reputation and recognition arise as concerns in both circumstances. However, where inventorship is wrong, the real concern relates more to ownership of property.
That’s right, a patent is property, the same as is a house or a car. And absent an agreement to the contrary, in most countries an inventor is the owner of the property claimed in a patent. So in many cases, inventorship can mean ownership.
Importantly, where inventorship is wrong, the patent can be invalid, meaning that the wrongful inclusion of an individual as an inventor can effectively destroy the property rights of the true inventor. It follows that it is very important for all concerned that rules surrounding authorship and inventorship are not confused.
So how does one go about determining inventorship? Unfortunately, this is a difficult area of Australian law and there are differences in domestic law on the point from country to country. However, the following approach seems to be generally consistent with the law of many countries.
The first step is to have a patent specification drafted that describes the invention or inventive concept. Why? Because there needs to be some agreement between the parties claiming ownership as an inventor as to the definition of the property at issue. Without a patent specification, it is much like determining who is the owner of land without a survey that describes the boundaries of it. In fact it is even more problematic because land is a tangible asset whereas intellectual property, by its very nature, is not.
Having obtained a patent specification, the next step is to carefully review the specification to understand what the invention or inventive concept is. In some countries such as the US, the focus is on the claims, so that a person claiming entitlement as an inventor might in law not be so entitled if his contribution is disclosed, but not claimed by the patent claims of the specification. In other countries such as Australia, the focus is on the specification as a whole, and a finding that a contribution has been disclosed but not claimed in a specification does not necessarily void a claim to inventorship.
Of course not all contributions that appear on the face of a specification will provide basis for a valid inventorship claim. What is much more important is the nature of the contribution. On the other hand, the contributions do not have to be equal. The question is more around whether a contribution has been qualitative rather than quantitative. To drill down on the point a little more, the following contributions may indicate inventorship:
- where a contribution has had a material effect on formation of the invention;
- where a contribution was to the ‘conception of the solution’ to a problem solved by the invention;
- where one person had a general idea of what was required but did not necessarily know how to put that idea into effect, and another person did so;
- where the final concept of the invention would not have come about without a particular person’s involvement.
In contrast, the following are not normally associated with inventorship (but might well give rise to authorship):
- where a person’s contribution involved no more than carrying out instructions;
- where the contribution amounted to nothing more than a suggestion of something well known that has no material effect on the invention;
- where the contribution was more along the lines of explaining how an invention works once that invention had been made.
Finally, the inventorship determination must be done before a patent is allowed or granted and ideally it is done before filing.