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[s97682]

Dear all,

I am a post doctoral researcher and I use co-patenting information to map the network of collaboration of individual inventors. Most of my research deals with the effect of these networks on individual and firm performance / technological outcomes.

I would be really interested to know from those of you who are corporate inventors, or work for firms as IP lawyers:

1) What sorts of practices, or internal rules, imposed by corporations, determine who appears on the list of inventors on a patent, no matter her/his real contribution to the patented invention.
I am thinking about rules such as:
- the head of the lab has to be on the patent, whatever his contibution OR
- marketing folks are systematically added to the list

2) To what extent are these practises pervasive, or adopted? Do you think that the individuals on a patent represent a reliable portion of the individuals which contributed to the invention?

3) I would also appreciate suggestions concerning readings/documents/articles on such kinds of corporate practices.

The issue is that when I formally go to the inventors though the companies to ask whether the list of people on a patent is a valid proxy of the people who invented it, inventors tend to say yes (More than 87% of them agree that this is the case).

However, I sometimes hear stories that question my empirical results.

Any suggestion, here or by email to cboggione@gmail.com would be greatly appreciated.

Thanks in advance!

Claire

[khazzah]

What sorts of practices, or internal rules, imposed by corporations, determine who appears on the list of inventors on a patent, no matter her/his real contribution to the patented invention.

An actual policy of listing inventors "regardless of his/her real contribution" comes dangerously close to incorrect inventorship with deceptive intent. Incorrect inventorship with deceptive intent subjects your patent to invalidation, and probably subjects a practitioner who is aware of this to a charge of inequitable conduct.

Therefore, I'd be really surprised if you find anyone who will discuss this with you.

What you might ask instead, is what policies a company uses in determining what inventors are listed on an internal invention disclosure form. Such forms are probably viewed as a first cut at determining inventorship, subject to later review by a patent attorney for a real determination of inventorship, once more facts are known.

[JimIvey]

Just to clarify Karen's concern, naming someone without a real contribution as an inventor renders the patent invalid, as does not naming someone with a real contribution.

If a conceptual contribution of a person is included in a patent claim, that person must be named as an inventor.

If no conceptual contribution of a person is included in a patent claim, that person must not be named as an inventor.

That's the law.  There's no room for corporate or other policy to make those decisions.

Karen's concern appears to be rooted in the notion that mistakes in naming inventors can be corrected if the mistake was made without the intent to deceive.  If the named inventors are not the real inventors and the naming was made with the intent to deceive, there's no fixing the problem.

So, always name the correct inventors.  Also note that changes to the claims during prosecution may require changes in the named inventorship, as the precise language of the claims controls who ought to be listed.

Now, one place where there is some flexibility is in the order of inventors named.  Some places sort the names according to perceived relative quantity of contribution -- largest relative contribution first.  Other places sort by rank in the company -- highest ranked inventor first.

Regards.

[Isaac]

In countries other than the US, the naming of extra inventors on a patent may not be of any consequence as when the patent is assigned to a company by all of the named inventors.   Under US law, though, naming of inventors can have an effect on what art can be applied to the claims.  Perhaps in those countries, companies may have rules for what inventors get named may be similar to the rules for whose name goes on published papers.

But as Jim and Khazzah have pointed out, you cannot apply those guidelines on patents filed in the US.

[Wiscagent]

If a conceptual contribution of a person is included in a patent claim, that person must be named as an inventor.

If no conceptual contribution of a person is included in a patent claim, that person must not be named as an inventor.

That's the law.

I agree.

There's no room for corporate or other policy to make those decisions.

I don't completely agree with that last sentence.  It's not always clear-cut who did and who did not contribute to the conception of the invention.  In such situations the practitioner has to make an informed judgment about who is an inventor.  And the practitioner might take into consideration that an individual who believes he or she is an inventor, but is not listed on the patent, might make trouble for the applicant if the patent is asserted; but it’s less likely that a person improperly named as an inventor will be a trouble maker.  So the bias (not a corporate policy) is often to include such borderline inventors as inventors on the application.

Perhaps that bias contributes to inventor inflation, i.e. the number of inventors per patent has increased over the years.

[khazzah]

There's no room for corporate or other policy to make those decisions.

I don't completely agree with that last sentence.  It's not always clear-cut who did and who did not contribute to the conception of the invention.  ... So the bias (not a corporate policy) is often to include such borderline inventors as inventors on the application.

How about something in the middle: the law doesn't allow corporate policy to decide the factual question of inventorship, but when the facts are unclear, the patent attorney can use corporate policy to inform his judgment.

Or no ... when the facts are unclear, the patent attorney is required to make all reasonable inquiries to determine the facts? If so, does how much inquiry is reasonable depend on whether the attorney is inhouse or outside counsel? That is, seems like inhouse counsel would have access to way more information than outside counsel.

[JimIvey]

Yes, you're both right that conception and contribution are not always clear and easy to identify.  It's not uncommon for ideas to be conceived in a brain-storming meeting in which individual contributions are just impossible to track. 

And, to some degree, an assignee can influence inventorship by specifically including or excluding contributions of specific individuals in the claims.

However, the point I was trying to make is that companies can't just always include the chief scientist or CTO on every patent application regardless of contribution of that person to the invention claimed -- addressing the OP.  Once a client understands the absolute requirements of 102(f) (as I summarized), then we can start talking about the practical realities.

Regards.

[p1091685]

Dear forum participants,

I am also a faculty member working on co-inventing relationships and I just found this post while doing an internet search on a similar issue. I take advantage of this open discussion to sum up what I understood from your comments and add a few elements to discussion.

If I got your points, your opinion would be that such practices would be highly discouraged in the US, because according to 35 USC 102(f), omitting an individual who has significantly contributed to one of the claims, would lead to patent invalidation.

Yet, there seem to be some room for discretion in judgement when it comes to deciding who contributed to the invention, and in that case, corporate policy may be used to inform this judgement. Such rules are highly tacit, may be inspired by practices used in publications, and indeed are then revised/validated by the patent attorney. Your overall idea is that, if such biases exist, they have lead to inflate the number of authors (so that firms' can prevent any future legal action).

Is this understanding correct? Would you have anything to add, or any legal reference in this respect (cases of inventor omission that led to invalidation?

Also, a few additional questions:
1- From your experience/best guess, what share of inventors, in a company, would you expect to be "borderline inventors", as you defined them in the previous posts? Do you expect them to be similar to inventors cited in the patent, or to have specific characteristics (e.g., be younger, part-time, students, marketing personnel, etc...). How large is the amount of authorship based invalidation/ corrections and could you please suggest me some sources where I can get such figures?

2- If the bias you expect is towards an inflation of authors, why do we still observe so many cases of omitted inventors? And again, do you see common traits in omitted inventors (age, type of employment, etc...)

3 - As to cues or rules that may drive the inclusion of authors in patents and in scientific publications, I found a lot of resistance of scientists and engineers to talk about them. They do not say that the phenomenon does not exist, though they cannot really describe what is going on. In the best scenario, I have cases where people complained about what is going on, though they did not want to disclose. My question is: does any of you have experience to share on these topics?

Thanks a lot for this post. Also, Claire, I wrote you an email at the address above but it seems not valid. Could you contact me, if you have a chance? Elisa

[JimIvey]

While I'm only one data point, I don't see any omitted inventors.  I really don't have any means for determining actual inventorship other than asking questions of whoever I'm put in contact with at the client.  I explain the law and ask for a list of people and their contributions to the body of technology to be included in the patent application(s).  If someone is excluded from the list, I don't know about it. 

Once, years ago, some VP of Engineering at a company was to be listed as the sole inventor several patent applications.  When I asked how this or that was done, he said he didn't know and referred me to engineers in his department.  When I asked whether they should listed as inventors, he told me that he didn't want them to be listed.  That was a huge red flag and I explained the consequences.  I reported that to the partner in charge and let him decide what to do about it.  The way the VP handled the issue made me think the firm would do well to terminate its relationship with that client.  Because I was a "trouble maker" (there were even bigger ego showdowns with the VP), the client asked that I didn't work on their work anymore and I was delighted.

My point is this:  There is no room for corporate policy in determining inventorship.  You always do your best to get the inventors listed properly each and every time -- always a factual inquiry.  If I get a sense that the client is monkeying around with who's listed and who's not, I don't stand for it.  My job is to get the client enforceable rights and jeopardizing those rights for some internal political BS is contrary to my responsibility to the client.

One last thought:  you mentioned you're a faculty member.  One of the challenges faced in patents for academia is that there's a well-established tradition for naming authors in academic papers.  That tradition is antithetical to naming inventors on patents.  There is typically some resistance to dropping the authorship practices when dealing with patents, but it's important that authorship practices do not scuttle patent applications.  Listen to your patent attorney/agent.

Regards.

[khazzah]

Yet, there seem to be some room for discretion in judgement when it comes to deciding who contributed to the invention

I would rephrase a bit.

I disagree that there is "room for discretion in deciding who contributed to the invention" because inventorship is a question of fact, i.e., there is a right/wrong answer as determined by the fact-finder (judge or jury). Inventorship is not, therefore, something that you can alter in any way to make it come out the way you want.

That said, inventorship is a *complicated* question, which means there is always judgment involved to some degree.

corporate policy may be used to inform this judgement. Such rules are highly tacit, may be inspired by practices used in publications, and indeed are then revised/validated by the patent attorney.

The attorney looks to information provided by the client in order to make a determination of inventorship. In that sense, client policy is indeed used to inform the attorney's judgment.

[khazzah]

2- If the bias you expect is towards an inflation of authors, why do we still observe so many cases of omitted inventors? And again, do you see common traits in omitted inventors (age, type of employment, etc...)

Who says we see lots of omitted inventors?

Since a corporation/business/university must get the inventor to assign his rights over, one might expect the "common trait" to be "doesn't work directly for the corp/business/univ."

1- From your experience/best guess, what share of inventors, in a company, would you expect to be "borderline inventors", as you defined them in the previous posts?

I doubt you're going to get any practitioners to answer this -- what attorney wants to admit to knowing about even a "borderline" case of incorrect inventorship? 

How large is the amount of authorship based invalidation/ corrections and could you please suggest me some sources where I can get such figures?

I believe some legal databases (Lexis, Westlaw) have ways to search for invalidated patents. Dunno if this includes an easy way to identify the reason for invalidation.

[George White]

Elisa,

Both including non-inventors and omitting true inventors are problems that can potentially lead to invalidation.
Someone left off who thinks they were a true co-inventor and did not have an obligation to assign their interests can pop up later and not just get their name on it - but can claim an undivided ownership interest in the whole patent. That may explain some inflation and may also explain "omitted" inventors raising their hand later.

I did a quick WestLaw search and found a case (Hoffmann-La Roche Inc. v. Cobalt Pharmaceuticals Inc. Slip Copy, 2010 WL 5392683) that held that a patent with an erroneous list of inventors could avoid invalidation by having its inventorship corrected by the USPTO under the appropriate statute (35 U.S.C. 256) even while the patent was involved in a court case. The hitch is that the statue requires statements of on the part of various parties (no deceptive intent on the part of people being added + everyone else saying they agree that the new list is correct) . So as long as those people can be found and those statements can be made the owner of the patent can avoid a ruling of invalidity.

A twist for the future: The new patent law apparently remove the words "deceptive intent" everywhere it appears in 35 USC so it should be easier to recover from wrong inventorship.

If you are the faculty member Elisa I know please send me an email and I will be happy to be of further help.

--George White

[Ghoti]

Some hypothetically messy inventorship scenarios.

Manager asks lowly engineer to deisgn a device which holds paper together. Engineer goes about designing a bunch of paper holders over the following year and at each follow-up meeting (as required) they tell the manager of the designs. Engineer works with attorney to file a patent.

Situation A) Manager never adds anything to engineers design and knows it. Or, Manager adds something inventive and everyone agrees. - No problem.

Situation B) Manager never adds anything to engineers design, but thinks they did (as they gave the engineer the task, managed the engineer, saw the designs as they progressed etc). The engineer doesn't think the manager added anything but won't directly say it when in front of others.

Situation c) Manager adds to the design, eg material choices which are not part of the invention. Assume here that the manager and engineer agree on what the managers contribution is, the question now is about whether that contribution is inventive.

How a company approaches and ultimately concludes the difficult situations of B and C is influenced by company culture (as distinct from determined by company policy).

[Wiscagent]

Ghoti asks about a manager who may have had an inventive contribution.  I was on project where the manager's contribution was something as simple as during a discussion the boss asked me something like "Did you try putting that part in upside down?  It might not plug up as fast."  He was surprised a month later when I asked him to sign the invention disclosure.  So based on the boss's suggestion, he became a co-inventor on the patent; his suggestion ended up as a dependent claim in the granted patent.

A similar situation exists with junior members of a team.  Early in my career I was involved in a project, based on which a couple of patent applications were filed.  I am not an inventor on the patent, in fact I was unaware of the patent application until the patents granted.  So I complained to the boss, and he explained that I was merely carrying out routine lab procedures, and did not have an inventive contribution.  I disagreed, but that was the end of the story.

In both these situations there was a primary inventor, and a secondary person contributed to the effort.  An in both situations it would be difficult to determine whether the "other guy" should be an co-inventor.  And that's where corporate culture kicks in. 

In many corporations, the low to middle level engineer or scientist has very little contact with or influence on the patent practitioner, especially if outside council is used.  If the practitioner only communicates with management or senior technical personell, then their version of what happened is all the practitioner hears.  And the practitioner decides inventorship accordingly.

In some companies, the low to middle level engineer or scientist does have extensive contact with the patent practitioner.  In that situation the perspective of those low to middle level technical personell is given more attention.