Hello and welcome to the Patent Pending Made Simple podcast. I'm your host, Summer Shaw, and with me today is Jamie Brophy. Jamie, how are you? Hi, Summer. I'm good. How are you? I am doing well. I feel like we haven't recorded in a while. I have been sick and just on the road to recovery, so I'm glad to be back at this again. Yeah. Me too. I think we have an interesting, helpful topic today. Hopefully our listeners will find it interesting.
I hope so this is the one that always makes me more nervous than maybe some of the other topics we've talked about and that is Inventorship. This seems like a pretty straightforward topic on the surface, But it can be quite complicated. So do you want to set us up in terms of, what is an inventor and why does the pen office care? Yeah, sure. So yeah, we've been getting some questions from clients about who should be included as inventors on their application. And I think.
In general, it's anybody that helped to come up with the idea behind your patents. And specifically anybody that helped come up with the idea that is written in the claims. If anybody helped just, Reduce to practice the invention. If you hired, an engineer to help you make a prototype or help you with the drawings, that doesn't really count as an inventor. 'cause they didn't really help with the idea. They just helped you, make the prototype based on your idea.
So I think, what do you think Summer? Does that about cover it? That's right. Yeah. The roots of this, I think goes back to when the patent statutes were codified in our legislation. And there was this belief that, individuals invent things. And actually that decision and legislation has created all sorts of new issues. As AI ends up doing more things and maybe ends up doing more of the inventive and conception work.
So it is interesting, but a lot of the groundwork was laid in the first patent act that Individuals are considered to have invented something in And we want to give credit and we want to list the people who have conceived of the invention and come up with the invention. And that is in some ways unique to the United States. Foreign countries are less interested sometimes.
So in the U S the, all the right to an invention initially belongs to the inventor and then the inventor has to give that right to a company if it in fact belongs to a company. In many of the European jurisdictions in many countries around the world. It is assumed that a company owns the invention and all the rights kind of stem from, or are presumed to belong to the company. And then inventors are only playing a small role in that.
So it doesn't quite, the chain of title doesn't flow in exactly the same way in other countries as it does here in the U S which is nice. Yeah that's interesting. That's a good point. Yeah, if you're, working for a company and that company decides to file a patent application based on some work that you did, that intellectual property belongs to the company you work for.
I had a situation one time where An inventor came to us, wanted to file a patent application, and as I dug a little deeper into it, I found out that he came up with this idea while he was working for a company, and he was upset that the company didn't file a patent application on it, and he wanted to file it on his own. So it got a little murky because I was, telling him. I don't think this belongs to you. This intellectual property does not belong to you.
You came up with this while you were employed by this company. So it got a little messy there. Yeah. And I think that kind of gets to the root of this issue is, ultimately this is not just a theoretical exercise to figure out who did what but really because of the way the chain of title flows in the United States identifying what the responsibilities of the co inventors are. Is important.
So from a legal perspective, the way that it works is in the U. S. The person who came up with the invention is presumed to have also ownership of the invention unless there are some countervailing circumstances or contracts to the contrary. And the biggest one is usually your employment agreement, right? When take a job somewhere. You're usually signing pieces of paper. Sometimes you're signing 20, 30 pieces of paper.
Some of these contracts can be very long and sometimes they co op or incorporate like an employee handbook, which could be hundreds of pages long. And you have, you, And whatever you sign in the contract it actually governs the day and most employment contract will say that if you have invented something during the course of your employment and during the normal course of your responsibilities in this job, then that invention, whatever you invented actually belongs to the company.
And that's why That's why it's important to read your employment agreement carefully, understand what your IP obligations are and really figure that out because I've seen it be done a hundred different ways. Sometimes the employer will say anything that you invented that is part of your kind of daily job during the part of like during business hours while you're employed will belong to the company.
Other employment contracts are very draconian, I would call them because they're like, Hey, anything you invent while you're employed with this company belongs to the company. Regardless of whether it's related to your employment and related to your job function or what time of day that you came, like you used your time and resources. So you have to be very careful and look at that as a starting point of this analysis.
Wow. Yeah. So a company could own anything you came up with while you were working for them. That's. Crazy. Yeah. Most states actually have laws against that, right? So you can write and a contract that broad But not all states.
So there are some exceptions You know, California tends to be pretty protective of employees so most Contracts signed in California, for example won't have language that broad But there are other states where there are not a lot of restrictions on what you can put in that contract. And some companies will take advantage of that. Wow. Okay. Summer, what about our independent inventors?
And specifically, what if there's a question Where, they're not sure who exactly came up with the idea, or they don't know what's going to end up being in the claims, and the inventorship is maybe a little murky. What should they do in that situation? Yeah, so on a technical level, inventorship is a claim by claim analysis. It is possible that somebody came up with one claim, but an additional person came up with a dependent claim or a different claim all within the same patent document.
So the correct way or the right way to do this is to go claim element by claim element. So look at your first independent claim, look at all the elements of it and ask yourself, who came up with this, who came up with this, who came up with this and make a list.
And everyone who came up with that or conceived of it and come up with, I guess I use it interchangeably with conception, which is what the law requires, but whoever conceived of these ideas is considered an inventor on that claim element or on that claim. And Jamie, I don't know if that's helpful or if we need to distinguish between a conception and reduction to practice. Yeah, I think it's worth bringing up again.
Yeah, as we talked about at the beginning, like the idea, the conception of the invention is different than reducing it to practice. You want to go into that in a little more detail, Summer? Yeah, maybe that would be helpful because, um, the line between the two can get a little blurry and messy sometimes, right? Maybe, could you give some examples of what conception may look like and what reduction practice may look like?
Yeah. You could have an idea for some kind of product and then, you're solving a certain problem. You come up with an idea for a product and during the process of making a prototype or making the product, you need help with Models or drawings or, whatever. So you're taking your idea and reducing it to practice, like making an actual product out of it. And then, that what you have in your mind might change a little bit during that reduction to practice.
Some. things might end up being different shapes or different sizes or, a different arrangement things like that. What would you like to add to that Summer? Yeah, no, I think that's very good. The reality is that it's very complicated, right? When you zoom all the way in, it's I remember in law school, like we had a whole month devoted to like conception and reduction practice. In our like semester long class on patents. And those were the questions that like tripped everyone up.
And they were great questions for a law school exam. It's okay, you came up with this, but then this part was changed during the manufacturing process. And the manufacturer suggested that. You change it because it'd be cheaper to make it this way. Is that conception or is that a reduction in practice? And law students in training or patent attorneys in training would get that wrong all the time.
So it's actually a really complicated inquiry and I would recommend that the folks watching or listening at home try not to do this on your own because it's pretty complicated and requires a nuance thinking about what is conception and what is reduction to practice. If you are splitting hairs about this thing, I would say go talk to a patent attorney or a patent agent about this. They'll help you sort that out because it's not something that I would self diagnose on. Yeah, definitely.
And, I think in general, a more broad piece of advice is to include The include inventors, if you, if it's questionable you don't want the inventorship to be an issue. If your patent ever comes into question, if you ever have to go through some kind of litigation or, infringement issue, you don't want the inventorship to be the thing that takes you down. So I think in general, it's a good idea to include.
Anybody that you think might be an inventor as we were discussing earlier before this call summer, sometimes that gets a little difficult because you would, then want. Some of the inventors to assign their rights to the company or your company or you know Whatever that may be and some inventors might be reluctant to do that So but I think in general it's a good idea to include inventors if there's a question about it. What do you think summer?
Yeah, I think that's a really good advice and the reason you want to be conservative here is like you mentioned Jamie the stakes are so high If you get this wrong Your patent can be invalidated or that's grounds for invalidating the patent down the road.
And the way that it practically happens in litigation is that, let's say you're trying to sue somebody on your patent, and they're going to try to defend themselves, and one way they can defend themselves is by saying actually, your patent is invalid because you didn't list all the inventors. And they'll go and try to find other people who might have contributed to this invention.
Who may be unhappy about the fact that they were left off the document or believe they have some rights to the invention and were stiffed out of that money. So they'll go find people who are motivated to testify against this, right? And who will come and testify and say that actually I helped conceive of the idea or this part of the idea, but I was never listed. And that's grounds for invalidating the patent and it's an appropriate way to defend yourself if you find yourself in a patent lawsuit.
So that's the way it happens practically. Your patent could also be invalidated for listing too many people, right? That's possible too. But in practice, I have never seen that happen, right? I've never seen somebody testify in open court and say this ban should be invalidated because they should not have listed me. It just doesn't happen that way. It's just part of the human process.
Usually those who were listed as co inventors are proud of the fact that they helped conceive of this idea made a difference in the world, or maybe they're even earning some royalties on it. They're less motivated to try to testify against the patent. So that's the reason we try to be over inclusive is, if we think somebody help co conceive of this invention or a part thereof, then we should list them.
And I think that's the right thing to do because especially if you don't have all the data, ideally in an ideal world, you'll have all the data and you'll make the right decision. But if you are not sure I think listing somebody is a good idea. Yeah, definitely. So yeah, I think that covers everything for inventorship. Do you have anything else to add Summer? No, I don't think so. I will say one more thing.
We, you touched upon this Jamie but as soon as you list somebody as a co inventor it triggers all sorts of other obligations, right? They have a joint and equal ownership. In our United States legal system every inventor has joint and equal ownership of a patent. Everybody owns a patent. That 100 percent of the patent is that how you should think about it. So as soon as you have multiple inventors in place, you need to start thinking about who actually owns the patent, right?
Or who's going to make decisions about this patent. So that's going to trigger additional obligation and maybe some contracts. or some additional paperwork at the patent office about ownership and things like that. Those are things that you need to start thinking about once you solve the or answer the question of inventorship. Yeah, good point. And that brings up one other thing that I wanted to mention.
From my point of view, when I'm preparing a patent application, we typically ask the client who should be listed as an inventor. And when I prepare the patent application, before we file the patent application, I like to get approval from all of the inventors on the patent application, before we file it, everybody has to sign a declaration that goes into the patent application and that declaration, part of that declaration is that they've.
reviewed the application and they understand what's in it. If you're going to list somebody as an inventor, hopefully they're available during the filing process and can review those things. Yeah, that's a really good point. Every inventor has to attest that this is in fact a true and correct invention that they have invented. And it's hard to do that if you haven't read the pen application. So yeah, that's a really good point, Jamie.
Yeah. Okay. I think that's it for our episode about inventorship. Thanks Summer. Yeah. Thank you, Jamie. I think this was hopefully interesting. This is the one that gives me concern all the time because it's such a clear error if you don't get it right that, it's, and it's really problematic, the stakes are pretty high. So I hope this was helpful to everyone. And I think that's all we've got. So we'll hopefully see everyone on the next episode.