The Complexities of Determining Inventorship

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Hello and welcome to the Patent

Pending Made Simple podcast.

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I'm your host, Samar Shah, and

with me today is Jamie Brophy.

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Jamie, how are you?

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Hi, Samar.

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I'm good.

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How are you?

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I am doing well.

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I feel like we haven't

recorded in a while.

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I have been sick and just on

the road to recovery, so I'm

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glad to be back at this again.

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Yeah.

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Me too.

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I think we have an interesting,

helpful topic today.

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Hopefully our listeners

will find it interesting.

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I hope so this is the one that always

makes me more nervous than maybe

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some of the other topics we've talked

about and that is Inventorship.

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This seems like a pretty

straightforward topic on the surface,

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But it can be quite complicated.

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So do you want to set us up in

terms of, what is an inventor

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and why does the pen office care?

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Yeah, sure.

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So yeah, we've been getting some questions

from clients about who should be included

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as inventors on their application.

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And I think.

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In general, it's anybody that helped to

come up with the idea behind your patents.

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And specifically anybody that

helped come up with the idea

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that is written in the claims.

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If anybody helped just, Reduce

to practice the invention.

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If you hired, an engineer to help you make

a prototype or help you with the drawings,

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that doesn't really count as an inventor.

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'cause they didn't really

help with the idea.

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They just helped you, make the

prototype based on your idea.

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So I think, what do you think Samar?

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Does that about cover it?

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That's right.

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Yeah.

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The roots of this, I think goes

back to when the patent statutes

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were codified in our legislation.

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And there was this belief that,

individuals invent things.

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And actually that decision and legislation

has created all sorts of new issues.

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As AI ends up doing more things

and maybe ends up doing more of

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the inventive and conception work.

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So it is interesting, but a lot of the

groundwork was laid in the first patent

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act that Individuals are considered

to have invented something in And we

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want to give credit and we want to list

the people who have conceived of the

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invention and come up with the invention.

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And that is in some ways

unique to the United States.

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Foreign countries are

less interested sometimes.

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So in the U S the, all the right to

an invention initially belongs to

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the inventor and then the inventor

has to give that right to a company

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if it in fact belongs to a company.

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In many of the European jurisdictions

in many countries around the world.

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It is assumed that a company

owns the invention and all the

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rights kind of stem from, or are

presumed to belong to the company.

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And then inventors are only

playing a small role in that.

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So it doesn't quite, the chain of

title doesn't flow in exactly the

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same way in other countries as it

does here in the U S which is nice.

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Yeah that's interesting.

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That's a good point.

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Yeah, if you're, working for a company

and that company decides to file a

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patent application based on some work

that you did, that intellectual property

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belongs to the company you work for.

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I had a situation one time where An

inventor came to us, wanted to file

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a patent application, and as I dug

a little deeper into it, I found out

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that he came up with this idea while

he was working for a company, and

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he was upset that the company didn't

file a patent application on it,

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and he wanted to file it on his own.

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So it got a little murky

because I was, telling him.

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I don't think this belongs to you.

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This intellectual property

does not belong to you.

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You came up with this while you

were employed by this company.

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So it got a little messy there.

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Yeah.

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And I think that kind of gets to the

root of this issue is, ultimately this

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is not just a theoretical exercise to

figure out who did what but really because

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of the way the chain of title flows in

the United States identifying what the

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responsibilities of the co inventors are.

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Is important.

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So from a legal perspective, the

way that it works is in the U.

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S.

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The person who came up with the

invention is presumed to have also

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ownership of the invention unless there

are some countervailing circumstances

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or contracts to the contrary.

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And the biggest one is usually

your employment agreement, right?

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When take a job somewhere.

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You're usually signing pieces of paper.

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Sometimes you're signing

20, 30 pieces of paper.

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Some of these contracts can be very

long and sometimes they co op or

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incorporate like an employee handbook,

which could be hundreds of pages long.

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And you have, you, And whatever you sign

in the contract it actually governs the

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day and most employment contract will

say that if you have invented something

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during the course of your employment

and during the normal course of your

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responsibilities in this job, then

that invention, whatever you invented

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actually belongs to the company.

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And that's why That's why it's

important to read your employment

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agreement carefully, understand what

your IP obligations are and really

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figure that out because I've seen

it be done a hundred different ways.

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Sometimes the employer will say anything

that you invented that is part of your

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kind of daily job during the part of

like during business hours while you're

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employed will belong to the company.

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Other employment contracts are very

draconian, I would call them because

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they're like, Hey, anything you

invent while you're employed with

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this company belongs to the company.

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Regardless of whether it's related

to your employment and related

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to your job function or what time

of day that you came, like you

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used your time and resources.

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So you have to be very careful and look at

that as a starting point of this analysis.

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Wow.

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Yeah.

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So a company could own anything you came

up with while you were working for them.

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That's.

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Crazy.

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Yeah.

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Most states actually have

laws against that, right?

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So you can write and a contract

that broad But not all states.

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So there are some exceptions You

know, California tends to be pretty

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protective of employees so most

Contracts signed in California, for

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example won't have language that

broad But there are other states where

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there are not a lot of restrictions

on what you can put in that contract.

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And some companies will

take advantage of that.

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Wow.

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Okay.

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Samar, what about our

independent inventors?

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And specifically, what if there's

a question Where, they're not sure

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who exactly came up with the idea,

or they don't know what's going to

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end up being in the claims, and the

inventorship is maybe a little murky.

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What should they do in that situation?

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Yeah, so on a technical level,

inventorship is a claim by claim analysis.

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It is possible that somebody came up with

one claim, but an additional person came

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up with a dependent claim or a different

claim all within the same patent document.

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So the correct way or the

right way to do this is to go

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claim element by claim element.

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So look at your first independent

claim, look at all the elements of

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it and ask yourself, who came up

with this, who came up with this, who

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came up with this and make a list.

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And everyone who came up with that or

conceived of it and come up with, I

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guess I use it interchangeably with

conception, which is what the law

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requires, but whoever conceived of

these ideas is considered an inventor

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on that claim element or on that claim.

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And Jamie, I don't know if that's helpful

or if we need to distinguish between a

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conception and reduction to practice.

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Yeah, I think it's

worth bringing up again.

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Yeah, as we talked about at the

beginning, like the idea, the

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conception of the invention is

different than reducing it to practice.

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You want to go into that in

a little more detail, Samar?

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Yeah, maybe that would be helpful because,

um, the line between the two can get a

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little blurry and messy sometimes, right?

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Maybe, could you give some examples

of what conception may look like and

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what reduction practice may look like?

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Yeah.

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You could have an idea for some

kind of product and then, you're

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solving a certain problem.

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You come up with an idea for a product and

during the process of making a prototype

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or making the product, you need help

with Models or drawings or, whatever.

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So you're taking your idea and

reducing it to practice, like

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making an actual product out of it.

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And then, that what you have in

your mind might change a little bit

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during that reduction to practice.

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Some.

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things might end up being different

shapes or different sizes or, a

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different arrangement things like that.

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What would you like to add to that Samar?

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Yeah, no, I think that's very good.

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The reality is that it's

very complicated, right?

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When you zoom all the way in, it's

I remember in law school, like we

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had a whole month devoted to like

conception and reduction practice.

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In our like semester

long class on patents.

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And those were the questions

that like tripped everyone up.

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And they were great questions

for a law school exam.

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It's okay, you came up with this,

but then this part was changed

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during the manufacturing process.

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And the manufacturer suggested that.

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You change it because it'd be

cheaper to make it this way.

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Is that conception or is

that a reduction in practice?

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And law students in training

or patent attorneys in training

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would get that wrong all the time.

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So it's actually a really complicated

inquiry and I would recommend that the

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folks watching or listening at home

try not to do this on your own because

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it's pretty complicated and requires a

nuance thinking about what is conception

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and what is reduction to practice.

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If you are splitting hairs about this

thing, I would say go talk to a patent

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attorney or a patent agent about this.

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They'll help you sort that

out because it's not something

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that I would self diagnose on.

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Yeah, definitely.

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And, I think in general, a more

broad piece of advice is to include

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The include inventors, if you, if

it's questionable you don't want

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the inventorship to be an issue.

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If your patent ever comes into question,

if you ever have to go through some

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kind of litigation or, infringement

issue, you don't want the inventorship

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to be the thing that takes you down.

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So I think in general, it's

a good idea to include.

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Anybody that you think might be

an inventor as we were discussing

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earlier before this call Samar,

sometimes that gets a little difficult

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because you would, then want.

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Some of the inventors to assign their

rights to the company or your company

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or you know Whatever that may be and

some inventors might be reluctant

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to do that So but I think in general

it's a good idea to include inventors

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if there's a question about it.

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What do you think Samar?

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Yeah, I think that's a really good

advice and the reason you want to be

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conservative here is like you mentioned

Jamie the stakes are so high If you

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get this wrong Your patent can be

invalidated or that's grounds for

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invalidating the patent down the road.

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And the way that it practically happens

in litigation is that, let's say you're

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trying to sue somebody on your patent, and

they're going to try to defend themselves,

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and one way they can defend themselves is

by saying actually, your patent is invalid

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because you didn't list all the inventors.

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And they'll go and try to find

other people who might have

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contributed to this invention.

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Who may be unhappy about the fact that

they were left off the document or believe

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they have some rights to the invention

and were stiffed out of that money.

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So they'll go find people who are

motivated to testify against this, right?

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And who will come and testify and

say that actually I helped conceive

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of the idea or this part of the

idea, but I was never listed.

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And that's grounds for invalidating

the patent and it's an appropriate

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way to defend yourself if you

find yourself in a patent lawsuit.

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So that's the way it happens practically.

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Your patent could also be invalidated

for listing too many people, right?

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That's possible too.

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But in practice, I have never

seen that happen, right?

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I've never seen somebody testify

in open court and say this ban

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should be invalidated because

they should not have listed me.

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It just doesn't happen that way.

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It's just part of the human process.

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Usually those who were listed as co

inventors are proud of the fact that

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they helped conceive of this idea made

a difference in the world, or maybe

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they're even earning some royalties on it.

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They're less motivated to try

to testify against the patent.

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So that's the reason we try to be over

inclusive is, if we think somebody

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help co conceive of this invention or a

part thereof, then we should list them.

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And I think that's the right thing

to do because especially if you don't

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have all the data, ideally in an

ideal world, you'll have all the data

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and you'll make the right decision.

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But if you are not sure I think

listing somebody is a good idea.

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Yeah, definitely.

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So yeah, I think that covers

everything for inventorship.

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Do you have anything else to add Samar?

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No, I don't think so.

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I will say one more thing.

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We, you touched upon this Jamie

but as soon as you list somebody

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as a co inventor it triggers all

sorts of other obligations, right?

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They have a joint and equal ownership.

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In our United States legal system

every inventor has joint and

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equal ownership of a patent.

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Everybody owns a patent.

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That 100 percent of the patent is

that how you should think about it.

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So as soon as you have multiple inventors

in place, you need to start thinking

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about who actually owns the patent, right?

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Or who's going to make

decisions about this patent.

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So that's going to trigger additional

obligation and maybe some contracts.

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or some additional paperwork

at the patent office about

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ownership and things like that.

00:13:47.769 --> 00:13:51.179

Those are things that you need to start

thinking about once you solve the or

00:13:51.179 --> 00:13:52.739

answer the question of inventorship.

00:13:53.239 --> 00:13:54.449

Yeah, good point.

00:13:54.479 --> 00:13:57.189

And that brings up one other

thing that I wanted to mention.

00:13:57.239 --> 00:14:01.239

From my point of view, when I'm

preparing a patent application,

00:14:01.784 --> 00:14:05.524

we typically ask the client who

should be listed as an inventor.

00:14:05.864 --> 00:14:09.584

And when I prepare the patent application,

before we file the patent application,

00:14:10.044 --> 00:14:14.564

I like to get approval from all of the

inventors on the patent application,

00:14:14.564 --> 00:14:18.784

before we file it, everybody has to sign

a declaration that goes into the patent

00:14:18.784 --> 00:14:23.034

application and that declaration, part

of that declaration is that they've.

00:14:23.224 --> 00:14:25.934

reviewed the application and

they understand what's in it.

00:14:26.354 --> 00:14:29.834

If you're going to list somebody

as an inventor, hopefully they're

00:14:29.854 --> 00:14:33.564

available during the filing

process and can review those things.

00:14:34.504 --> 00:14:36.024

Yeah, that's a really good point.

00:14:36.134 --> 00:14:39.404

Every inventor has to attest that

this is in fact a true and correct

00:14:39.774 --> 00:14:41.354

invention that they have invented.

00:14:41.634 --> 00:14:44.274

And it's hard to do that if you

haven't read the pen application.

00:14:44.274 --> 00:14:46.424

So yeah, that's a really

good point, Jamie.

00:14:47.014 --> 00:14:47.494

Yeah.

00:14:47.994 --> 00:14:48.374

Okay.

00:14:48.374 --> 00:14:51.464

I think that's it for our

episode about inventorship.

00:14:51.674 --> 00:14:52.624

Thanks Samar.

00:14:53.414 --> 00:14:53.804

Yeah.

00:14:53.814 --> 00:14:54.574

Thank you, Jamie.

00:14:54.574 --> 00:14:56.734

I think this was hopefully interesting.

00:14:56.824 --> 00:15:00.064

This is the one that gives me concern

all the time because it's such a

00:15:00.064 --> 00:15:03.274

clear error if you don't get it

right that, it's, and it's really

00:15:03.274 --> 00:15:04.794

problematic, the stakes are pretty high.

00:15:05.124 --> 00:15:07.424

So I hope this was helpful to everyone.

00:15:07.504 --> 00:15:08.854

And I think that's all we've got.

00:15:08.854 --> 00:15:11.114

So we'll hopefully see

everyone on the next episode.