Inventor. An inventor mentioned as such in a patent or patent application is necessarily a natural person. It cannot be a legal person such as a company. Several inventors may be mentioned: if the invention has been made by a team, then it is owned by the plurality of natural persons who compose it, and each one of them must be designated as an inventor in the patent or patent application.
The designation of the inventor in a patent application is a legal document, the legal and financial consequences of which are far from being neutral. It is essential to mention the true inventors in the patent, as a false designation may have as a legal consequence the loss of the patent. In the United States in particular, intentionally omitting the name of a person who is an inventor or knowingly identifying as an inventor either a person who has just collaborated during the research tasks or the operational leader of an entity may result in the invalidation of a patent.
Who should be mentioned as an inventor then? The inventor status is not left to the sole discretion of the applicant, but rather has a strict legal meaning under the laws and regulations governing patents in each country.
An inventor is a person who has contributed to the design of the invention as claimed in the main or dependent claims (new combination of means, new use of known means, etc.) or to at least one of its essential components, thus providing an inventive contribution to the state of the art.
As the inventor status is related to the patent claims, a person may lose his or her status as an inventor during the prosecution of a patent application. Indeed, if the only claim of a pending patent application related to a given inventor falls, the name of this person should disappear from the list of the inventors.
The inventor is not only the one who has a general idea. This is the one who transforms the idea into a combination of means, responsive to a specific technical problem. The United States patent law uses the expression "reduction to practice". Only those who have been personally involved in the realization of the invention obtain the inventor status. There is a difference with the practice of scientific publications, in which the scientific leader who gave general guidance is usually listed among the authors.
By contrast, co-workers developing the invention subsequently to the conceptualization of its essential means are not regarded as inventors. Specifically, it is generally considered that the invention is not completed after realization of a prototype or completion of experimentation, but rather when the principles are identified that allow a person having ordinary skill in the art to implement the invention with reasonable development efforts, but without research efforts nor extensive experimentation.
Therefore, the following persons cannot be considered as inventors:
- a performer who simply follows the instructions of the inventor,
- a sponsor or manager who only sets general objectives of the invention to be carried out, or a research director who was not personally involved in the implementation of the invention, even though the scientific leader is usually mentioned among the authors in scientific publications,
- a colleague or supplier who provides information of general order,
- a colleague or service provider who makes modifications, adjustments or drawings not involving an inventive step.
In situations where it is difficult to identify who the real inventors are, such as when the invention is the result of a brainstorming session, legal caution can lead to name as an inventor any person who may have provided an idea allowing the conception of the invention. In such a situation, only the persons who have not spoken during the brainstorming session can be unambiguously dismissed as inventors. The minutes of meetings should in this respect be properly prepared, validated by the participants and archived.
Right to ownership of the patent. The right to ownership of the patent belongs to the inventor or to the inventor team. The inventor (or group of inventors) may assign its right to a patent to one or more other natural or legal persons.
The owner(s) or proprietor(s) of the patent may thus be:
- the inventor(s) or
- one or more other natural or legal persons, acquiring from the inventor the right to a patent, or
- jointly, one or more inventors and one or more other natural or legal persons.
Thus, the patent can be obtained on behalf of a company (for example a partner or employer) that obtained from the inventor(s) a written assignment of the invention. In most countries, the patent application may be directly filed on behalf of the assignee of the rights, subject in certain cases to justification of this assignment. In the United States, however, the patent application may only be filed initially in the name of the inventors (natural persons). It can then be assigned to one or more assignees, natural or legal persons, who then become the owners invested of the exclusive rights of exploitation, pursuant to contractual provisions such as a work performance or service contract (e.g. an employment contract).
The assignment of the patent right can raise significant challenges when it is not clearly regulated by a contract, particularly in the case of inventions made by employees or subcontractors of work of research and development.
To avoid misunderstandings, it is desirable to ensure that the issue of ownership of intellectual property rights is clarified in the contract concluded with the employee or supplier and, preferably, to ask for our assistance of intellectual property specialists.
Inventions of employees. If the inventor is an employee, the right to the European patent is determined in accordance with the law of the State in which the employee is mainly employed or in which the employer has the place of business to which the employee is attached.
In many countries such as Germany, China, France or Japan, the law provides that inventions of mission lying within the scope of a mission entrusted to an employee or made with the means of the employer (financial resources, human resources, equipment, general resources, raw materials) are automatically assigned to the latter. The employer is held to pay the employee inventor an extra remuneration (sometimes called compensation), which can be granted at the time the patent application is filed or upon issuance of the patent. The amount of this additional remuneration can be contractual or variable and depends on various factors, in particular the profit drawn from the exploitation of the invention, the value of the invention, and the personal contribution of the employee inventor to the implementation of the invention.
When the invention is carried out by an employee outside of its mission and with its own resources, the employer may, under certain conditions and subject to payment of a fair price, claim the right to the patent or the benefit of an exclusive license.
In the other cases and the other countries, such as the United States or the United Kingdom, the fate of the inventions made by employees has to be regulated by a contract (typically by a clause in the employment contract or by amendment thereto).
Practices are diverse. In the United States of America, for example, inventors often receive a share of the benefits drawn from the exploitation of their innovations, through employment contracts providing for royalties or other incentives such as stock options. In Japan, however, engineers and scientists are generally not associated with the benefits of the company and only receive a compensation that rarely exceeds a few hundred Euros per invention.
We recommend adopting internal guidelines on employee inventions, which should include:
- a licit and shared definition of the concept of inventor,
- a definition of the categories of inventions that belong to the employer,
- internal procedures of notification to the employer of any invention and response of the employer as to the action it intends to take on the invention,
- a statement of confidentiality rules,
- a definition of the rules for remunerating inventors and the obligations of the latter to assist in the proceedings for grant of patents with which they are associated.
Inventions of external service providers. If the inventor is an external service provider, independent or employee of either a subcontractor, a research partner or a temporary employment agency, the right to a patent is not automatically reserved to the sponsor, but belongs in whole or in part to:
- the actual employer of the inventor if the employment contract of the latter includes an inventive mission, or
- the service provider itself, if it is a self-employed person, or, if it is employed by a partner company, in the case when there is no inventive mission clause in its employment contract.
This is so even if the sponsor has organized and paid the research program. We therefore strongly recommend to unambiguously set the fate of innovations made within the framework of a collaboration or a subcontract work by a written contract signed before the beginning of any collaboration.
Who is already owner of what before the beginning of the collaboration? Who will be the owner of the adopted solutions? Who will have the right to exploit them and under which conditions? If the external service provider or supplier suggests a certain number of technical solutions, drawings, models or logos and the company retains only one of them, who will hold the intellectual property rights attached to the other proposals?
In addition to the inventions, the contracts of research and development should also contain provisions conferring to companies the rights on know-how, copyright on the research reports and the obtained results, as well as the rights on the physical material used in the research activities, such as micro-organisms or other biological products, and also intellectual property rights on all general information that is not in the public domain. All these data must remain strictly confidential.
Competing or interfering inventions. If two or more persons or teams have made an invention independently of each other, the right to the patent shall belong to:
- the person whose patent application has the earliest date of filing, in Europe, Canada, China or Japan ("First to File" system),
- the person who actually first conceptualized the invention and especially who is able to prove it, in the United States ("First to Invent" system).
Co-ownership. Patentable results of research undertaken jointly may be the subject of a common patent application, then a common patent, which is owned jointly by all the depositors. The co-owners of a patent must then organize their common property.