Whether someone is a co-inventor will be determined by their qualitative contribution to the inventive concept. Parties should put arrangements in place before entering into discussions regarding the invention to clarify if the person is intended to be purely a consultant or a co-inventor.

When does picking someone's brains turn into co-inventorship of a patent? The recent Full Federal Court decision in Kafataris v Davis [2016] FCAFC 134 provides useful insight into when co-inventorship will arise and raises the question of how one should manage a consultation process to avoid (or confirm) co-inventorship.

Mr Kafataris antes up

The patent in suit related to an alternative manner of playing card games. The player could play a primary game while at the same time exercising betting options on a secondary or auxiliary game, either separately from the primary game or in co-operation with the primary game.

Mr Kafataris sought to be recognised as a co-inventor as the invention disclosed in the provisional application, prior to his involvement, had been limited to supplementary betting options in the game of baccarat. However, after his involvement, the PCT application included a supplementary betting option for the game of blackjack. 

Mr Kafataris asserted that the "invention" indeed went further and applied to all casino table card games, and that the evolution of the invention from the provisional application to the PCT application evidenced his contribution and entitled him to co-inventorship.

The primary judge disagreed and the Full Federal Court of Australia also unanimously dismissed the appeal.

The patentee's trump card: quality, not quantity

At first instance, the primary judge accepted that:

  • Mr Kafataris had made a material contribution by identifying a supplementary betting option within the game of blackjack; and 
  • the parties were working together to forge an "ongoing commercial relationship".

However, the primary judge rejected the notion that Mr Kafataris' contribution amounted to co-inventorship.  The test for the primary judge was not whether there was a quantifiable contribution to the invention, but whether Mr Kafataris had made a contribution that was "material, tangible or qualitative." In particular, the contribution had to be geared towards the "concept, design or perhaps method" and be objectively seen as part of the invention.  

In this case, the Full Court approved of this analysis and further stated that the proper inquiry for co-inventorship is to the person's "contribution to the conception of the invention". 

The Full Court agreed with the primary judge that the inventive concept was the supplementary betting option and held that the primary judge was correct in finding that Mr Kafataris had failed to demonstrate that he had made a material contribution to this inventive concept.  Mr Kafataris had taken the concept, as applied in baccarat, and provided another example of its application in blackjack.  This contribution was insufficient to amount to inventorship.  Baccarat and blackjack were simply alternative embodiments of the one invention, with the inventive concept "substantially unchanged" from the provisional application to the PCT application. As the Full Court succinctly concluded, "there is nothing novel about the game of blackjack, nor was there anything novel about the secondary bet option for blackjack".

Should inventions be kept close to the chest?

The issues in Kafataris were relatively straightforward. However, the case is a strong reminder of the grey area that can exist when a patent application involves multiple contributors.  Unlike Kafataris, the inventive concept, design or method is not always clear and may require close scrutiny of the specification and the prior art.  

Therefore, as a matter of practice, an inventor should ensure that appropriate contractual arrangements are in place before consulting with other parties. This is not only useful to avoid disputes but ensures each party is aware of its entitlements and obligations.  It can also help to avoid disclosures of the invention that may impede valid patent protection.

Inventorship will always be a complex process.  Pre-empting such issues may ensure that, while the inventor's patent application can evolve, the number of claimed inventors does not.