Inventor (patent)
Encyclopedia
In patent
law
, an inventor is the person
, or persons in United States patent law
, who contribute to the claims
of a patentable
invention
. In some patent law frameworks, however, such as in the European Patent Convention
(EPC) and its case law
, no explicit, accurate definition of who exactly is an inventor is provided. The definition may slightly vary from one European country to another. Inventorship is generally not considered to be a patentability criterion under European patent law
.
Under U.S. case law, an inventor is the one with "intellectual domination" over the inventive process, and not merely one who assists in its reduction to practice
. Since inventorship relates to the claims in a patent application
, knowing who an inventor is under the patent law is sometimes difficult. In fact, inventorship can change during the prosecution
of a patent application as claims are deleted or amended.
"Joint inventors", or "co-inventors", exist when a patentable invention is the result of inventive work of more than one inventor. Joint inventors exist even where one inventor contributed a majority of the work.
Absent a contract
or license
, the inventors are individuals who own the rights in an issued patent. Status as an inventor dramatically alters parties' ability to capitalize on the invention.
. In practice however, the European Patent Office
(EPO) never investigates whether the proposed inventor is indeed the true inventor. Indeed, "[f]or the purposes of proceedings before the [EPO], the applicant shall be deemed to be
entitled to exercise the right to the European patent".
Court actions relating to the entitlement to the grant of a European patent must be brought before the national court which has the jurisdiction. The jurisdiction is determined in conformance with the "Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent" or, in short, the "Protocol on Recognition". Once a final decision is issued by a national court adjudging that the applicant is not entitled to the grant of a European patent, the procedure according to is applicable.
In contrast with U.S. patent law, the applicant for a European patent needs not be the inventor. The right to the European patent may validly be transferred before the filing of the application, e.g. by contract, by inheritance
, or as a consequence of the "employee's rights" as determined by the applicable national law. However, the inventor has the right to be mentioned as such before the EPO The EPO does not verify the accuracy of the designation of the inventor. The inventor may waive its right to be mentioned as such in the European patent application and European patent specification.
Inventorship is traditionally not classified as a patentability
criterion under European patent law, in contrast with U.S. patent law. However, inventorship can be relevant to patentability in Europe, although in only a limited way. Where a disclosure is made within 6 months preceding the filing date of a European patent application, the disclosure is not taken into consideration if it was due to, or in consequence of, an evident abuse in relation to the applicant or his legal predecessor. Thus the identity of the inventor (who is often the applicant, or his legal predecessor) can be of vital importance.
, a patent application must be filed in the name of the inventors. This requirement that a patent be issued in the name of the inventors is derived from the intellectual property clause of the United States Constitution
:
An inventor is a party who has contributed at least one claim to a patent. The courts explain that "[t]he threshold question" of inventorship is "who conceived the invention." Courts recognize that invention is rarely a solitary endeavor. Therefore, conception and "intellectual domination" over an invention is important and "reduction to practice, per se, is irrelevant. One must contribute to the conception to be an inventor."
Generally, conception is "the complete performance of the mental part of the inventive act", and "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.." (emphasis added). An idea is usually not "definite and permanent" or "complete" where changes result from experimentation. In this case, other individuals who contribute to the formation of the "definite and permanent" idea are co-inventors.
The naming of inventors is very important for the validity of the patent. Intentionally failing to name, or incorrectly identifying inventors, can result in a patent being held invalid. Ordinarily, the courts presume the named inventors are the inventors so long as there is no disagreement.
An inventor cannot opt out from being mentioned as such in a U.S. patent, even if the patent application was assign
ed before publication. Assignment of rights in a patent does not alter to whom the patent is actually issued. In fact, an assignee may only have an equitable interest in the patent until it is issued and then legal interest would transfer automatically. If the inventor is dead, insane, or otherwise legally incapacitated, refuses to execute an application, or cannot be found, an application may be made by someone other than the inventor.
or other consideration. The inventor may also sell the patent outright. Henry Woodward
, for example, sold his original US patent on the light bulb to Thomas Edison
who then developed it into a commercially successful product.
Inventors who are employees of a company generally sell or assign
their patent rights to the company they work for. The extent to which they are compensated will vary from jurisdiction to jurisdiction and may depend upon any prior employment agreements that are in place. Under Japanese patent law
, for example, an employee is entitled to a “reasonable fee" for an invention. In 2006 Hitachi
was ordered to pay an employee $US 1.6 million for an invention the employee made that was commercially valuable. In United States, however, an employee may have to sign over the rights to an invention without any special compensation. Germany has a law on employees' inventions providing strict rules concerning the transfer of rights to an invention to the employer. It also prescribes mandatory compensation of employees for inventions they make. This right to compensation cannot be waived in advance, i. e. before the employer is informed of an invention.
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
law
Law
Law is a system of rules and guidelines which are enforced through social institutions to govern behavior, wherever possible. It shapes politics, economics and society in numerous ways and serves as a social mediator of relations between people. Contract law regulates everything from buying a bus...
, an inventor is the person
Person
A person is a human being, or an entity that has certain capacities or attributes strongly associated with being human , for example in a particular moral or legal context...
, or persons in United States patent law
United States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, who contribute to the claims
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
of a patentable
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
. In some patent law frameworks, however, such as in the European Patent Convention
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC) and its case law
Case law
In law, case law is the set of reported judicial decisions of selected appellate courts and other courts of first instance which make new interpretations of the law and, therefore, can be cited as precedents in a process known as stare decisis...
, no explicit, accurate definition of who exactly is an inventor is provided. The definition may slightly vary from one European country to another. Inventorship is generally not considered to be a patentability criterion under European patent law
European patent law
European patent law covers a wide range of legislations including national patent laws, the Strasbourg Convention of 1963, the European Patent Convention of 1973, and a number of European Union directives and regulations....
.
Under U.S. case law, an inventor is the one with "intellectual domination" over the inventive process, and not merely one who assists in its reduction to practice
Reduction to practice
In United States patent law, the reduction to practice is a concept meaning the embodiment of the concept of an invention. The date of this embodiment is critical to the determination of priority between inventors in an interference proceeding....
. Since inventorship relates to the claims in a patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
, knowing who an inventor is under the patent law is sometimes difficult. In fact, inventorship can change during the prosecution
Patent prosecution
Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent...
of a patent application as claims are deleted or amended.
"Joint inventors", or "co-inventors", exist when a patentable invention is the result of inventive work of more than one inventor. Joint inventors exist even where one inventor contributed a majority of the work.
Absent a contract
Contract
A contract is an agreement entered into by two parties or more with the intention of creating a legal obligation, which may have elements in writing. Contracts can be made orally. The remedy for breach of contract can be "damages" or compensation of money. In equity, the remedy can be specific...
or license
License
The verb license or grant licence means to give permission. The noun license or licence refers to that permission as well as to the document recording that permission.A license may be granted by a party to another party as an element of an agreement...
, the inventors are individuals who own the rights in an issued patent. Status as an inventor dramatically alters parties' ability to capitalize on the invention.
European Patent Convention
Under the European Patent Convention (EPC), identifying the inventor of a given invention is theoretically very important since "[t]he right to a European patent (...) belong[s] to the inventor or his successor in title", according to the first-to-file principleFirst to file and first to invent
First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...
. In practice however, the European Patent Office
European Patent Organisation
The European Patent Organisation is a public international organisation created in 1977 by its contracting states to grant patents in Europe under the European Patent Convention of 1973...
(EPO) never investigates whether the proposed inventor is indeed the true inventor. Indeed, "[f]or the purposes of proceedings before the [EPO], the applicant shall be deemed to be
Legal fiction
A legal fiction is a fact assumed or created by courts which is then used in order to apply a legal rule which was not necessarily designed to be used in that way...
entitled to exercise the right to the European patent".
Court actions relating to the entitlement to the grant of a European patent must be brought before the national court which has the jurisdiction. The jurisdiction is determined in conformance with the "Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent" or, in short, the "Protocol on Recognition". Once a final decision is issued by a national court adjudging that the applicant is not entitled to the grant of a European patent, the procedure according to is applicable.
In contrast with U.S. patent law, the applicant for a European patent needs not be the inventor. The right to the European patent may validly be transferred before the filing of the application, e.g. by contract, by inheritance
Inheritance
Inheritance is the practice of passing on property, titles, debts, rights and obligations upon the death of an individual. It has long played an important role in human societies...
, or as a consequence of the "employee's rights" as determined by the applicable national law. However, the inventor has the right to be mentioned as such before the EPO The EPO does not verify the accuracy of the designation of the inventor. The inventor may waive its right to be mentioned as such in the European patent application and European patent specification.
Inventorship is traditionally not classified as a patentability
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
criterion under European patent law, in contrast with U.S. patent law. However, inventorship can be relevant to patentability in Europe, although in only a limited way. Where a disclosure is made within 6 months preceding the filing date of a European patent application, the disclosure is not taken into consideration if it was due to, or in consequence of, an evident abuse in relation to the applicant or his legal predecessor. Thus the identity of the inventor (who is often the applicant, or his legal predecessor) can be of vital importance.
United States
In the United StatesUnited States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
, a patent application must be filed in the name of the inventors. This requirement that a patent be issued in the name of the inventors is derived from the intellectual property clause of the United States Constitution
United States Constitution
The Constitution of the United States is the supreme law of the United States of America. It is the framework for the organization of the United States government and for the relationship of the federal government with the states, citizens, and all people within the United States.The first three...
:
The Congress shall have power . . .
To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. (emphasis added)
An inventor is a party who has contributed at least one claim to a patent. The courts explain that "[t]he threshold question" of inventorship is "who conceived the invention." Courts recognize that invention is rarely a solitary endeavor. Therefore, conception and "intellectual domination" over an invention is important and "reduction to practice, per se, is irrelevant. One must contribute to the conception to be an inventor."
Generally, conception is "the complete performance of the mental part of the inventive act", and "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.." (emphasis added). An idea is usually not "definite and permanent" or "complete" where changes result from experimentation. In this case, other individuals who contribute to the formation of the "definite and permanent" idea are co-inventors.
The naming of inventors is very important for the validity of the patent. Intentionally failing to name, or incorrectly identifying inventors, can result in a patent being held invalid. Ordinarily, the courts presume the named inventors are the inventors so long as there is no disagreement.
An inventor cannot opt out from being mentioned as such in a U.S. patent, even if the patent application was assign
Assignment (law)
An assignment is a term used with similar meanings in the law of contracts and in the law of real estate. In both instances, it encompasses the transfer of rights held by one party—the assignor—to another party—the assignee...
ed before publication. Assignment of rights in a patent does not alter to whom the patent is actually issued. In fact, an assignee may only have an equitable interest in the patent until it is issued and then legal interest would transfer automatically. If the inventor is dead, insane, or otherwise legally incapacitated, refuses to execute an application, or cannot be found, an application may be made by someone other than the inventor.
Compensation of inventors
There are many ways in which an inventor might be compensated for a patent. An inventor might bring the patented product to market under the protection of the monopoly created by the patent. The inventor may license a patent to another entity for an up front fee, an ongoing royaltyRoyalties
Royalties are usage-based payments made by one party to another for the right to ongoing use of an asset, sometimes an intellectual property...
or other consideration. The inventor may also sell the patent outright. Henry Woodward
Henry Woodward (inventor)
Henry Woodward was a Canadian inventor and a major pioneer in the development of the incandescent lamp.-Work on the incandescent light bulb:On July 24, 1874, Woodward and his partner, Mathew Evans, a hotel keeper, patented an electric light bulb. Woodward was a medical student at the time. Their...
, for example, sold his original US patent on the light bulb to Thomas Edison
Thomas Edison
Thomas Alva Edison was an American inventor and businessman. He developed many devices that greatly influenced life around the world, including the phonograph, the motion picture camera, and a long-lasting, practical electric light bulb. In addition, he created the world’s first industrial...
who then developed it into a commercially successful product.
Inventors who are employees of a company generally sell or assign
Assignment (law)
An assignment is a term used with similar meanings in the law of contracts and in the law of real estate. In both instances, it encompasses the transfer of rights held by one party—the assignor—to another party—the assignee...
their patent rights to the company they work for. The extent to which they are compensated will vary from jurisdiction to jurisdiction and may depend upon any prior employment agreements that are in place. Under Japanese patent law
Japanese patent law
Japanese patent law is based on the first-to-file principle and is mainly given force by the Patent Act of Japan. Article 2 defines an invention as "the highly advanced creation of technical ideas by which a law of nature is utilized"...
, for example, an employee is entitled to a “reasonable fee" for an invention. In 2006 Hitachi
Hitachi, Ltd.
is a Japanese multinational conglomerate headquartered in Marunouchi 1-chome, Chiyoda, Tokyo, Japan. The company is the parent of the Hitachi Group as part of the larger DKB Group companies...
was ordered to pay an employee $US 1.6 million for an invention the employee made that was commercially valuable. In United States, however, an employee may have to sign over the rights to an invention without any special compensation. Germany has a law on employees' inventions providing strict rules concerning the transfer of rights to an invention to the employer. It also prescribes mandatory compensation of employees for inventions they make. This right to compensation cannot be waived in advance, i. e. before the employer is informed of an invention.