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Australasian Biotechnology, Vol. 11 No. 3, 2001, pp. 20 BIOTECH LAW IDENTIFYING THE INVENTORS Karen J. Sinclair, Principal Watermark Patent & Trade Mark Attorneys Code Number: au01037 "Increasingly it is common that intellectual property is identified and valued as an intangible asset on company balance sheets" The importance of identifying the inventor or inventors of a new technology stems from the fact that it is from this person or people that the right to file a patent application is derived. Thus the concept of "inventorship" for patent purposes is distinct from the concept of "ownership". Whilst inventors can be owners of the patents relating to the invented technology, at least due to the significant financial burden associated with seeking effective patent protection, and employer/employee relationships, it is common that the inventors of a technology are not its owners. Although the concept of "inventorship" is not one which is statutorily defined, nor in fact the subject of much discussion in legal texts, identifying the true and correct inventors of a technology is critical in ensuring that the patentee is legally entitled to the technology. As a result of the "publish or perish" mentality that existed for many years in academic institutions, it used to be the case that any person in any way associated with new technology was identified as an inventor on any patent application filed. Thus it was that all the occupants of a laboratory were identified as inventors, from the Director of the Institute to the lowliest laboratory technician. Politics also often came into play in situations where, for example, if one person was not named, neither could another be, and vice versa. Increasingly it is common that intellectual property is identified and valued as an intangible asset on company balance sheets. It is also common that individual employment contracts are more flexible in their remuneration structures, and that collaboration between corporate, academic and government organisations is required to keep new technology in the pipeline. In all these contexts it is important to ensure correct inventorship details and, consequently, properly derived title to intellectual property so that proper recompense is awarded and public records are correct. How Do You Do It? A useful question to determine whether a member of a team is an inventor of new technology is to ask whether, but for that person, the invention would have been made. Thus, the person who conceived of the solution, as well as another person who made critical observations, or another who reduced the ideas to practice, may all be equally entitled to the title "inventor". The Law In Australia Guiding principles in determining "inventorship" were set out in a 1998 decision of the Administrative Appeals Tribunal, Upham v. Commissioner of Patents ({1998} AATA 852).
The seminal intellectual property text "Patents for Inventions" (T.A. Blanco White 4th Ed. 1974) describes the nature of an inventor as follows: "An inventor is not required to construct his apparatus with his own hands, and is entitled to incorporate details suggested by the workmen or draughtsmen to whom he gives such work, provided always that they do not amount to invention." Nevertheless, the sounder practice, when framing an application for patent, is to include as inventors all those who have made any discernible personal contribution to the final result." When? In Australia, it is not necessary to identify the inventors in a provisional patent application, however they should be correctly named in a standard patent application. The identity of the inventors in respect of a patented technology can be simply corrected at any time under Australian law provided cogent reasoning is provided for the change. If inventors are not correctly named it is open to a challenger to allege that the patentee is not entitled to the invention under S59(a) in opposition or S138(3)(a) in revocation proceedings. The issue of inventorship is often overlooked or incompletely considered. However, the ramifications of not carrying out a proper investigation can be serious. In the worst-case scenario, a patent may be revoked if proper derivation of title from the true and correct inventors cannot be demonstrated. To err on the side of caution, adding persons who may not have made an inventive contribution may be less problematic than leaving them out. Ownership of inventions will be considered in a forthcoming issue of this journal.
Copyright 2001 - AusBiotech |
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