The Troubles with Patent Inventorship

By Richard Stobbe

Determining inventorship is answering the question: who contributed enough to an invention to be named as an “inventor” on the patent application? It’s critical, as reviewed by my colleague Shohini Bagchee in her article Whose Invention Is It Anyway? – Some Thoughts on Patent Inventorship and Ownership.

Although the US case Ethicon Inc. v. U.S. Surgical Corp. (135 F.3d 1456) is not a new decision, it’s worth reviewing since it neatly illustrates the troubles that can arise. In Ethicon, a first inventor, Dr. Yoon, obtained a patent covering a certain surgical device. The patent contained 55 claims. Yoon granted a license to Ethicon. On the stregth of this license, Ethicon turned around and sued its competitor U.S. Surgical for infringing two of the claims in the Yoon patent. U.S. Surgical in the course of preparing its defence found that Mr. Choi had contributed to the invention and he should have been named as co-inventor on the Yoon patent.

Mr. Choi contributed to only two of the 55 claims – two claims which were not at issue in the infringement action. In its defence, U.S. Surgical sought – and the court granted – an order that Mr. Choi be added as a co-inventor to the patent. Even though Mr. Choi had contributed to a small percentage of the overall invention (and had contributed to claims that were not at issue in the lawsuit), his status as a co-inventor permitted him under US law to grant a license to the whole patent. Ethicon’s patent infringement lawsuit was dismissed after Choi granted a retroactive patent license to U.S. Surgical.

Lessons for business?

  • Internal IP policies and invention-disclosure protocols should be designed to capture all inventors who contributed to inventorship.
  • In joint research agreements or joint development agreements, don’t ignore co-inventorship issues.
  • Remember that invention-disclosure and inventorship should dovetail with invention assignment agreements, as well as the IP provisions in employment agreements and consultant agreements.
  • Ensure you are getting legal advice regarding inventorship as it relates to the jurisdiction in which you are filing your patent application.
  • Remember that the law in Canada and the US differs on this point: A co-owner’s interest in a co-owned patent can be licensed without the consent of the other owner in the US and there is no need to account to the other owner for licensing revenue; but in Canada the patent cannot be licensed without the consent of the other co-owner.

Calgary – 07:00 MST

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