Teamwork Can Benefit Your Company’s Research, but Verify Inventors on any Resulting Patent Application

Hodgson Russ LLP

Laboratory glasswareMuch of today’s innovation is a collaborative process. In the past few weeks, stories were in the news about breakthroughs involving groups of researchers working on aluminum batteries, carbon electrodes for lithium-ion batteries, wearable power generation, and wireless power transmission. The prevalence of collaboration in research is reflected in U.S. intellectual property trends. A study in 2009 showed that, over the past four decades, the average number of inventors per patent increased. A study in 2013 showed that the number of patents with solo inventors fell between 2005-2013.

While collaboration has benefits, it can cause problems when it comes time to file a patent application. Not all work done by members of a project team may be sufficient to qualify everyone as joint inventors under U.S. patent law. The proper list of inventors on a patent application may not include all the project team members because each joint inventor must contribute in some significant manner to the formation of a definite and permanent idea for at least one claim of the invention. Thus, each joint inventor must conceive of something in the claims.

Merely attending meetings or being someone’s manager is probably not enough to make one a joint inventor. There is no lower limit on the quantity or quality of a contribution to the invention, but some contribution to conception of at least one claim is required to be a joint inventor. A person is not a joint inventor if he or she fails to contribute anything to conception.

It is important that only “real” inventors be listed on a patent application because a patent that lists incorrect inventors may be invalid. Without correction, an opponent can assert the patent is invalid during a patent infringement lawsuit. Correction of the inventor listing is possible, but this process may be time-consuming or costly. Furthermore, correction may affect ownership of the patent, which can complicate litigation or licensing.

Fostering or encouraging collaboration can advance R&D projects. However, as a patent application is drafted, be aware that political or internal pressures can potentially result in an incorrect listing of inventors. The list of inventors on a patent application is not like a list of contributing authors on a research paper. Adding people as inventors merely to satisfy egos, reward them for their support, or help them gain recognition can have serious effects on a patent. Forgetting someone who should be legitimately listed as a joint inventor can be just as bad. To avoid invalidity arguments later, take some time to evaluate whether an inventor listing is correct before a patent application is filed. There may be no “I” in “team,” but there are plenty in “incorrect inventors” and “invalid patent.”

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Hodgson Russ LLP

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