Everyone would like to see their name on a patent application. But who is entitled to be listed as (one of) the inventor(s)? And what does it mean to be an inventor? Read on to find out!
When is someone an inventor?
Unfortunately, the European Patent Convention does not offer a definition of who exactly is an inventor, and the interpretation may differ slightly from one European country to another or even from case to case. All we know for sure is that an inventor is a human being, even though there has been some debate on whether or not an AI system can be an inventor.
US case law offers some more guidance as to what an inventor is: an inventor is someone that contributes to the ‘conception of the invention’. In this context, ‘conception’ is "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".
So a guideline can be that an inventor is someone who: a) did some creative thinking (“formation in the mind”), and b) contributed to at least a small part of the invention (anything that contributed to the “definite and permanent idea”). Thus, someone who merely followed instructions to perform experiments or who only contributed to the research financially is not an inventor.
Inventor = owner of the patent?
According to the European Patent Convention, “the right to a European patent shall belong to the inventor or his successor in title”. However, there are important exceptions to this.
When the inventor is an employee, the right to a European patent is determined by the national law of the country where the inventor is employed. Fortunately, most countries in Europe have similar laws when it comes to this. In principle, the company will have the right to the patent if the invention relates to the job of the employee. If the invention relates to something else (e.g. a drug developer inventing a new gear system for their racing bike), the employee has the right to the patent. More or less the same applies to inventions being made by someone following an education or training course.
However, when the invention has been made by a person carrying out research in the service of a university, college or research establishment, it is in principle the university, college or research establishment that is entitled to the patent – no matter what it relates to.
It is important to know that, at least under Dutch patent law, these provisions can be departed from by written agreement.
And be careful: not all jurisdictions provide for the ‘automatic’ assignment of the right to a patent from an inventor to the company or institute they work for. In the US, for instance, an inventor has the right to a patent unless they signed an employment agreement assigning invention rights, or were specifically hired for their inventing skills or to create the invention. NB: this also matters for applications that start in Europe and are subsequently filed in the US.
So always draft or read contracts and agreements carefully to determine who would be entitled to a patent for a (future) invention!
Why does it matter who the inventor is?
The inventor has an important right: the right to be mentioned as inventor on the patent (application).
Now you might think: why does that matter if the inventor not entitled to the patent? Firstly, it is official recognition of the inventive work that the inventor did – credit where credit is due. It makes their contribution to the institute or company more visible and more tangible. Secondly, it is also a publication with their name on it. Although scientific publications still ‘count’, there is a shift noticeable within the scientific community towards appreciation of valorization of the research. A patent publication can be an important part of this.
There may be an additional advantage: money. Some companies offer a bonus to the inventors upon filing of ‘their’ patent application and/or once the patent is granted. This would provide researchers with an additional incentive to bring forward patentable ideas and prioritize collaboration with the patent attorneys to achieve a grant, allowing the company to benefit from the protection and possible revenue a patent can provide.
In some jurisdictions, such as the US, the naming of inventors can even have consequences for the validity of the patent. Failing to name, or incorrectly identifying inventors, with deceptive intent, can result in a patent being held invalid or unenforceable.
Thus, although inventorship is not always straightforward, it is important to look into to who contributed what, and pay attention to what their contracts say about the assignment of invention rights. Discuss any possible issues with your patent attorney before filing of the patent application, or the (inventor)ship may have sailed…
Hopefully this blog has given you some useful tips and advice. Want to know more? Please contact me.