USA / PATENTS / INVENTORSHIP

Journal of Intellectual Property Law, University of Georgia, Vol 7 No 1, Fall 1999

The Importance of Correct Inventorship

Rivka Monheit

As the starting-point for a discussion of inventorship, based largely on an examination of the court’s decision in Ethicon Inc v United States Surgical Corporation, the author cites the US Constitution, under which Congress has the power to "promote the progress of science and the useful arts, by securing for limited times to … inventors the exclusive right to their … discoveries". It is the inventor to whom the Patent Act of 1994 allows the grant of a patent; and, if the patent application or the issued patent contains an incorrect listing of inventors, the patent could be invalid. The author looks at how inventorship is determined; the effects of recent legislation on determinations of joint inventorship; the collaboration requirement of joint inventorship; how inventorship is corrected in an issued patent and a pending application; the rights of joint inventors; and the ways in which the problems raised in the Ethicon case might be resolved. Much of the article comprises a detailed examination of the "conception" requirement in determining inventorship. This is followed by a critique of the decision, including the dissenting opinion, in the Ethicon case. In particular, the author considers the two problems raised in the case: namely, the fact that the patentee did not realise that a collaborator could be treated as a co-inventor and the fact that, without the voluntary joinder of any or all co-inventors, the patentee could not sue for infingement. The author concludes that remedies are needed for a situation in which an originally unnamed co-inventor can virtually and unilaterally invalidate the patent. One remedy would be for Congress or the Patent Office to promulgate more specific guidelines for determining inventorship. Another would be for the courts to join non-consenting co-inventors as involuntary plaintiffs. "The patent system, which was created to promote advances in science and engineering by granting a limited monopoly to inventors, does not serve its purpose when inventors lose patent rights due to such technical errors." [20027]