The Patent laws of all countries require that the inventors be named in the application for a patent at the time of filing the patent application. On the other hand publication of inventions in technical journals often requires the naming of the authors who authored the article. Now who is an inventor under the Patents Act? Who can be named as inventors in a patent application? What are the consequences of such names being identified in a granted patent? This article will attempt to discuss the issues relating to the identification and naming of inventors in patent applications.

Creators of Intellectual Work

Firstly laws governing patents, industrial designs and copyright make a clear distinction between the creator of the work and the legal owner of the work so created. The creator of a work is the person whose creative effort or mental output resulted in the work.

Table 1

Why is there a legal distinction between the creator and the owner of the work? All the work identified in Table 1 are capable of being considered as proprietory rights provided the legal procedures of acquiring such rights are duly complied with. Intellectual Property Rights are just like other tangible property rights. The owner of the rights has the absolute right to do what he wants with the rights (subject to other laws); he can assign the rights, license the rights or more importantly prevent others from using his rights without his consent. In general he can exploit the rights for monetary gain. Yes, the bottom line is money considerations.

Ownership of created works

But the creator need not necessarily be legal owner of the work! Is it surprising? Normally the creator of the work is also the legal owner of the work. This occurs where the creator is not under any obligation to others, either contractually or by virtue of other legal obligations. For example, a man writes a novel, he is the author and owner of the literary works; a housewife invents a gadget to separate the egg yolk from the egg white – she would be the inventor for a patent if granted.

However, in the modern business world, often the creator of the work is under some contractual obligations to a third party – very often his/her employer. His / her contract of employment may stipulate that all work created by him/her during the course of employment would belong to the employer. What happens if the contract of employment is silent or overlooked this issue? Does it mean the employee as creator of the work is entitled to his/her creation or becomes the legal owner of the work? Unfortunately (depending on which side you are) it is not so. In Malaysia, The Patents Act 1983, The Copyright Act 1987 provide that where the work (invention or copyrightable work) is created by an employee during the course of and normal scope of employment, the work so created belongs to the employer unless his contract of employment provides otherwise.

Who is an inventor?

Now who is an inventor? Of course, in many situations, the invention could have been created solely by one person working on the invention from the beginning to the end. He conceptualizes the invention and then proceeds to make the invention all by himself without any assistance from any other person. In such a case he is the sole inventor. But in a business environment or in an academic environment such situations are not common. Often more than one persons are involved in the research. Are all the persons in the team, or project entitled to be identified or named as inventors in the ensuing patent application? Are all of them entitled to be named as authors in any technical publication in a journal or magazine or technical publication?

The Patents Act is silent on this issue and it does not define who is an inventor. In the industrialized countries it is generally recognized that an inventor is the person who “conceptualized” the invention or who has made substantial contribution of at least one of the claims of the granted patent. It is important to note that any person named as the co-inventor must be identified with at least one or part of a claim. All others who may have been involved directly or indirectly in the research project, but cannot be identified with any claim or part of a claim, is not entitled to be named as an inventor. Thus technicians who carry out the bench work or who merely carry out the instructions laid out or who follow standard laboratory procedures are not inventors. By the same token, head of departments or faculties or Director-general of a research institution cannot be validly named as inventors if he merely gave policy directions or merely expressed a need for research in a defined area of technology. The golden rule is that each named inventor should be able to be identified to at least one claim or even part of a claim. For example in Japan, under Japanese patent law inventors are to be named in the patent application. If the applicant is not the inventor or the inventor’s assignee, the application must be refused. Like in many countries, Japanese Patent Law does not provide clear destination for determining who is an inventor or co-inventor. It has been left to the Courts to make a final determination on this issue. Court decisions seem to indicate that a co-inventor is such a person who must have actually participated in the creative activities relating to the technical elaboration of the invention. Accordingly, a person who merely assisted by carrying out the inventor’s instructions cannot be regarded as a co-inventor.

Otsuka Pharmaceutical Co. Ltd’s (Otsuka) owns a US Patent No. 4,277,4979 (a pharmaceutical product). The invention was developed by a number of Otsuka’s chemists and biologists. One of the employees, Mr. A, sued Otsuka and asked for compensation in the sum of ¥100m on the ground that he is a co-inventor. On 8 September 2006 the Tokyo District Court refused A’s claim. On appeal, the Appeal Court also rejected the claim.

The Court determined that Mr. A did not synthesize the active compounds; rather as a biologist he merely monitored the bioactivity of the active compounds. This activity was too indirect and did not qualify for co-inventor status. The appeal court went on to elaborate 3 indicative criteria for determining inventive activity qualifying to be a co-inventor for pharma products. The Court held that Mr. A did not contribute to the creation of the product by providing data enabling choosing the structure of the new products. Although he did improve the methods of control / monitoring and analysis, this activity fell within the normal competence of a person skilled in this act tasked with improving the reproducibility, efficiency and speed of the process (Source: YUASA and HARA’s IP News December 2007)

In academic and research institutions, in recent times, inventors named in patent applications or in granted patents are given monetary payments as incentives. It could probably be due to this policy that there is a tendency to name all those involved in a research project as inventors, even though not all of them contributed to the invention as claimed. What is the consequence of such inclusion of names as inventors? In many countries, the respective patent laws provide that incorrect listing of inventors if made with deceptive intent constitutes inequitable conduct and can jeopardize the validity of the patent. It can be a ground for revocation of any granted patent.

Authors of technical publications

Next let us look at the issue of naming of authors in technical publications. It is also common for institutions, especially universities to publish the research findings in technical journals.

Inventors vs Authors

In such publications of the inventors, authors are named as contributors to the research findings. On occasions the identified authors in the research publication are not the same as the named inventors in the corresponding patent application! This inconsistency can lead to many problems. In a recent case handled by the author, the named inventors in a patent application filed in the United States had to file a statutory declaration to state that not all the “authors” stated in the research publication disclosing the invention were the true inventors, to overcome objections raised during the patent prosecution before the US Patent office. In many institutions it appears to be a practice to name many persons, including undergraduates or research assistants as inventors or authors, even though they merely followed instructions. Generosity in these situations may prove fatal to a granted patent!

Of course, copyright laws recognize “joint-authorship” just as patent laws recognize “joint-inventorship”. In joint authorship similar legal issues as to commercial rights to the published work can arise, if the said work is highly successful commercially, that is to say, it attracts a lot of money either on assignment of the work or from royalty income if the copyright is licensed. Joint authorship can arise in two situations. In the first situation, each piece of published work is attributable or identifiable to a specific author, for example, where each chapter or paragraph is written by a separate individual. In the second situation, the work is combined such that it is not possible to attribute any identified piece of published work to any single individual.

Identifying and naming of true inventors in a patent application is important especially if the validity of the patent is challenged. On the other hand the listing of persons as authors or co-authors in a technical publication who are not true authors does not jeopardize the “validity” of the publication or the information disclosed in the publication. If the details of an invention are disclosed in a patent application and the same is also disclosed in a technical journal, then it is important to ensure the identity of the inventors and the authors are the same.

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[IP Advisory service from KASS (Issue 101/2008)]