Determining who owns an invention

Who can be an inventor?
The legal definition of the term ‘inventor’ is determined by national law, and so can vary from country to country. Generally, the inventor is the “actual devisor” of the inventive concept described in a patent application. Often we will identify more than one inventor for a patent application.

In practice, to qualify as an inventor, a person must contribute to the inventive concept behind an invention. The invention is what is new and inventive, so the inventor is the person who devised the claimed features that provide this novelty and inventive step. Merely contributing to the claimed features does not necessarily make that person an inventor. This is because not all claimed features may be novel and inventive – if the person contributed only features already known to the public (i.e. in the prior art), then they are not an inventor. Equally, someone who is told the novel and inventive features, and then implements them in routine ways is unlikely to be an inventor.

The increasing influence of artificial intelligence (AI) has posed an interesting question – can AI be named as an inventor in a patent application? Early test cases brought in a few different countries seem to have brought a consensus, namely that an inventor must be a natural person such that inventorship cannot currently be attributed to AI.

Why is it important to identify the correct inventors?
The consequence for failing to name inventors correctly is severe in some countries. For example, in the USA, incorrectly identifying the true inventor(s) can render a patent invalid, and hence unenforceable.

It is also important to identify not only the inventors correctly, but also their nationalities and in which country the invention was made – because of national security restrictions. In some countries, restrictions exist on where a patent application must be filed first dependent on whether it was made in that country or by a national or resident in that country. In some instances, we have to arrange foreign filing permits to allow a patent application to be filed in our client’s preferred first country.

Perhaps the most important reason to identify the inventors correctly is because the question of ownership is inextricably linked to the question of inventorship. Although there are differences around the world, most if not all determinations of patent ownership start with a determination of inventorship. The initial right to a patent is usually taken to belong to the inventor (or jointly to the inventors where there are more than one).

In many countries, the ownership of the patent will not rest with the inventors, but will pass automatically to another person or entity. Hence, for each inventor, we must determine whether there has been a transfer of ownership, for example to the employer of each inventor.

When will an invention belong to an employer?
This is a question of national law, and so there is no unique answer. However, many countries follow similar principles.

In many countries, the rights to an invention and any patent applications filed to cover the invention will automatically transfer to the employer of the inventor. However, this assumes that the inventor was employed in a position with duties that could reasonably be expected to result in the employee making inventions, and the invention was made in the course of carrying out those duties. Research engineers and scientists usually meet this requirement.

Some countries also see an automatic transfer of ownership when the inventor had a special obligation for furthering the interests of a business. Directors, partners or sole company owners are good examples of where such a special obligation may exist even if, strictly speaking, they are not “employed” by the business.

The above considerations are not always clear cut, and often require some investigation on our part. For example, factors such as whether the invention made in the employee’s own time and/or whether the employee used facilities provided by the employee are influential.

A further potential complication we check is who actually employs the inventor. This is because it is not always the company we are asked to name as the applicant, particularly in large organisations. Conversely, smaller group companies may also have agreements in place to transfer IP rights automatically to a larger company entity. Another relatively common situation arises where the employer of the inventors was itself commissioned to perform the research and development leading to the invention, and the commissioning contract contained clauses transferring the rights to any inventions to the commissioning party.

The USA is a notable exception to the general rule of automatic transfer of ownership to an employer. There is a much stronger presumption in the USA that the rights to a patent application remain with the inventors. Consequently, inventors are usually required to complete an assignment document to confirm transfer of the rights to the invention to the employer.

Can ownership of a patent be transferred?
Where a client wants a patent application to be owned by a particular entity, we will investigate to see whether or not all rights to that invention have transferred to that entity. Where this is not the case, we can prepare assignment documents to effect a transfer of ownership to the required entity.

Sometimes we receive assignments prepared in one country for us to register in another country. However, the legal form of assignments can vary from country to country, and so the assignment may not meet the requirements for registration (for example, which parties must sign, and the need for witnesses). In these cases, we usually prepare confirmatory assignments that meet the requirements for registration.

What is inventor compensation?
In some countries, there are legal provisions to ensure inventors are adequately rewarded. However, these provisions vary considerably between countries. Common considerations include the renumeration already provided to the inventor, the financial success of a patented product or process, and how much of that success can be attributed to the invention (as opposed to marketing, etc.).

Generally, the threshold to be entitled to inventor compensation is very high. As an example, this would apply if the invention has provided an outstanding benefit to the extent of providing something truly out of the ordinary when looked at in the total context of the employer’s activities.