Who can apply for a patent?
Anyone can apply for a patent – however, a patent can only be granted to the inventor, or to someone who has acquired the rights to the invention from the inventor. This may be because the inventor has chosen to assign those rights, or because they were required by contract to assign them to another person or company, such as their employer. The question then becomes:
Who is an inventor – and who is NOT?
This is a vital question, because in order to be valid the final granted patent must name all the inventors (although the order in which they are listed is unimportant).
There is no explicit definition of inventor in the Australian patents act. However, the generally accepted definition, in patent law worldwide, is that an inventor is any person who contributes to at least one claim of a patentable invention.
The important point here is that this definition only refers to the claims of the granted patent. It is often the case that many people contribute to bringing an idea to fruition (often termed “reduction to practice”). These people may even be responsible for particular aspects or features of an invention that are included as part of the detailed description of the invention in the patent specification. But if none of the material contributed by a person is reflected in the claims of the granted patent, then that person does not legally count as an inventor.
This rule applies equally to any people, companies or organisations that may have contributed resources to a research project (such as research funding or directional guidance). Unless they have made a substantive contribution to at least one claim of the patent they are not, legally, an inventor. For example, is unlikely that either of the following would be considered an inventor under the law:
- The head of a research department who performs a supervisory role, but does not contribute directly to the conception or realisation of an invention ‘in its final form’ (i.e. as it appears in the claims of the patent application).
- The CEO of a company engaged in research projects that result in patentable inventions.
There can be serious implications for incorrectly naming the inventors on a patent, and these can be very detrimental to your business. For example, you could
- Be forced to share ownership of the invention with another party or competitor.
- Entirely lose all rights to the invention.
Another situation to watch out for is where a person’s only contribution is putting someone else’s ideas into practice (without adding any substance to the invention). To be an inventor, the person must also have contributed to the conception of the final form of the invention or product.
For example, simply working under direction of another person (e.g a supervisor or superior) to produce a prototype of the invention does not qualify someone as an inventor of the final product. However, if the production of a working prototype does not go according to plan, and the person modifies the original idea to make the invention functional, then they will most likely be at least a co-inventor – and must be named as an inventor on the patent application.
Another common scenario is where work is outsourced to a contractor (say for the construction of a prototype, or for numerical modelling of a particular design). If the contractor contributes any original subject matter to the conceptual idea – such as by correcting a fatal defect that wasn’t previously recognised, or making suggestions for possible improvements – and those modifications form part of the invention in its final form as it appears in the claims of the patent, then the contractor is likely to be an inventor and must be named on the patent.
This particular scenario can have quite devastating consequences, because if a contractor should have been named as an inventor but wasn’t they can petition the courts to have their name added to the patent. If the courts agree then they (or their employer) may be named as a co-applicant of the patent. This would give them full rights to exploit (make, sell, use, export etc.) the invention, without recourse to any of the other applicants. So they would be able to set themselves up as a direct competitor (if they aren’t a competitor already), and use the invention without paying licencing fees or risking prosecution for patent infringement.
How can the inventorship be incorrect?
There are two ways that the inventorship can be wrong in your patent application or granted patent:
- Naming people who ARE NOT inventors, in the eyes of the law (i.e. if they have not made an inventive contribution to at least one claim).
- Not naming people who ARE inventors.
It is just as damaging to have too many inventors (i.e. naming people who are not inventors – whether through respect for a supervisor or a sense of fairness to a researcher who worked on a project) as it is to not have enough (i.e. omitting inventors).
Can I correct the inventorship if there is an error?
Thankfully, there is a relatively straightforward process to correct the list of inventors on a patent or patent application. All you need to do is submit a request to the relevant patent office to have the inventorship amended. If possible it is far better to do this whilst the application is still pending, so that the list of inventors in the final granted patent is correct. This eliminates the risk that the patent will be revoked or assigned (either fully or partially) by court order to another party.
For this reason it is extremely important to review the inventorship of your patent application regularly, at the very least whenever you make a substantive submission relating to the application to the patent office.
Inventorship audits
As you can see, it is critical that you discuss the issue of inventorship with your patent attorney from the very beginning of the patent process, to ensure that all the correct inventors are named.
But it is equally important, if not more so, that you review the inventorship regularly throughout the prosecution and examination process – especially if you make amendments to the claims in response to an objection by the patent Examiner. If anything is deleted from the claims to overcome an objection, the claim should be reviewed to ensure that each of the inventors on the patent application made a substantial contribution to the features of the amended claim.
If, for example, a feature contributed by an inventor is deleted entirely from the claims then that inventor should be removed from the patent application, as they would no longer have made a contribution to the final form of the invention as defined in the claims.
If you have any questions or concerns about who should be listed as inventors on your patent application, please give us a call. Our skilled attorneys can give you expert advice and conduct a thorough inventorship audit.
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