White SW Computer Law
|Intellectual Property, Information Technology & Telecommunications Lawyers|
Melbourne Office - PO Box 452, COLLINS STREET WEST Victoria 8007 Australia
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Telephone: Melbourne Office - +61 3 9629 3709 Sydney Office - +61 2 9233 2600
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The way in which inventorship is determined and dealt with by the Patent Offices in Australia, the United States and Europe differ, even though these jurisdictions have sought to harmonise their respective patent laws. This can be significant where a party seeks to patent an invention in more than one of these jurisdictions.
The Patents Act 1990 (Cth) does not define the terms “inventor” or “inventorship”, however, there has been judicial consideration regarding the term inventor, particularly in matters involving an application under s321) or s362).
Indicators of inventorship have been discussed in a number of cases, including:
The implications of getting inventorship wrong can have minor administrative consequences. For example, where the inventors' names are not stated on the request form and no notice of entitlement has been filed, the examiner should draw the applicant's attention to the need to either include the inventors' names in the notice of entitlement or else amend the request to include the inventor's names in it.
However, the consequence of getting inventorship wrong can also be quite serious – for example if a patent is granted to one of two inventors, without an assignment between them or to a person with no entitlement at all, that patent can be set aside at the suit of a party against whom the patentee seeks to enforce it9).
If an application is made under ss 32, 36, 59 or 13810), depending on the section relied on, the Commissioner may determine the name(s) in which a patent application proceeds, make a declaration as to the inventorship for the invention, refuse to grant a patent or revoke a patent. Therefore, the Commissioner and the Court have wide powers to change or remedy the claimed inventorship for a patent application.
A s32 request should be made only where a patent application has not lapsed. Pursuant to Regulation 3.611), a s32 request must be submitted in the approved form, including a notice stating the grounds on which the request is made. This request is published and the matter is determined by the Commissioner, without the parties being heard, unless the parties otherwise request.
If the parties request to be heard they must file evidence in support of their positions after which, the Commissioner will hear the application.
A s36 application is made if a dispute arises after a patent application has lapsed, but only if the patent request and complete specification have not been accepted12).
A s36 request must be submitted in the approved form, including a notice stating the grounds on which the request is made13) and may result in the Commissioner declaring in writing that the applicant or other parties are eligible persons in relation to the inventor – this may be as a result of an inventor not being recorded as the inventor and / or eligible person in the application. Prior to a declaration being made, the former patentee must be given a reasonable opportunity to be heard14).
Pursuant to s5915), if the patent application has been accepted, a party can file a notice of opposition within 3 months of the date on which the patent application was advertised as accepted16). A valid ground for opposition is if a patent application specifies the wrong nominated person as being entitled to a grant of a patent for the invention or that co-entitle persons are not included as nominated persons. This may arise when the true inventor is not named as the nominated person (and has not assigned their interest to another party) or if not every co-inventor is named (and they have not assigned their interest to another party).
Similarly, if a patent has been granted, pursuant to s138, it can be revoked if the patentee is not entitled to the invention – again, this may occur if the true inventor is not named as patentee (and has not assigned their interest to another party) or if not every co-inventor is named (and they have not assigned their interest to another party).
Where an incorrect listing of inventors has occurred merely as a result of a clerical error or an obvious mistake, pursuant to s104(1)(b) an applicant for a patent or a patentee may ask the Commissioner for leave to amend the relevant patent request or complete specification, or any other filed document for the purpose of correcting the error or mistake.
The restrictions of the correction of the listing of inventors are that the time limitations mentioned above apply and the burden of proof that ordinarily rests with the applicant requesting the correction.
In general, whoever invents or discovers any patentable subject matter may obtain a patent for that subject matter17). In the Unites States, the inventor is the person who conceived the patented invention18). In the United States, conception “is the touchstone of inventorship”19).
As stated in Mueller Brass Co v Reading Industries20) “to claim inventorship is to claim at least some role in the final conception of that which is sought to be patented. Perhaps one need not be able to point to a specific component as one's sole idea, but one must be able to say that without his contribution to the final conception, it would have been less - less efficient, less simple, less economical, less something of benefit”.
In the case of joint inventorship, there are no explicit minimum requirement regarding either quantum or quality of inventive contribution required21). The question of joint ownership turns on the facts of the case22). It is assessed on a claim by claim basis as co-inventors do not have to have contributed to the subject material of every claim23).
The most important issue to consider is “conception”, which is the “formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention”24). This means that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation. However the invention must include every feature as claimed in the patent application25).
Section 102(f)26) requires that the correct inventors be listed in a patent. Therefore a patent may be held invalid if more or less than the true inventors are named.
For patent applications, pursuant to §11627), the inventorship claimed in a pending application may be corrected, where fewer than the true inventors are named, provided that the omitted parties were not omitted with deceptive intent on behalf of the omitted parties28).
Section 102(f) is ameliorated by §256, which saves the patent from being rendered invalid. In all cases where there is a misjoined inventor, §256 may be used to correct the error, whether it occurred by deception or innocent mistake31).
Where the parties do not agree to the correction of the inventorship for a patent, §256 allows redress in the federal court32).
The inventors named in the patent are presumed to be correct, so the burden of proof in a §116 or §256 application rests on the applicant and must be satisfied by clear and convincing evidence33).
There is no time limitation on the period during which inventorship can be corrected pursuant to §256, however normal equitable principals may arise if there is undue delay by a party seeking the correction34).
The European Patent Convention (EPC) provides a system under which a patent application is only examined by the European Patent Office (EPO), but results in patent rights in each Contracting State in respect of which it is granted. A European patent confers the same rights as would be conferred by a national patent granted in that State.
The EPC grants an inventor the rights to a European patent, but does not define the term inventor. Inventorship is determined by the national laws in each Contracting State.
For example, in the United Kingdom, the term inventor is defined as “the actual deviser of the invention”35). This definition has been interpreted by the UK courts as meaning a two step process:
Inventions made in the course of employment, are a special case, with inventorship being determined by the national laws of the country in which the employer conducts their business.
The implications of getting inventorship wrong are determined by the national laws of each Contracting State in respect of which the patent is granted.
Rule 1937) provides that an incorrect designation of an inventor may be rectified where the request to do so is accompanied by the consent of the wrongly designated person and if the request is not filed by the applicant for or proprietor of the European patent, by the consent of that party. The incorrect mention of the inventor in the Register of European Patents or as published in the European Patent Bulletin will be corrected
Article 6238) states that the inventor shall have the right, vis-à-vis the applicant for or proprietor of a European patent, to be mentioned as such before the European Patent Office. There are no limitations placed on this right of the inventor.
Again, any restrictions on the correction of an incorrect listing of inventors will be dependant upon the national laws of each Contracting State in respect of which the patent is granted.
Due to the differences in the way in which inventorship is treated in Australia, the United States and Europe, patent applicants who plan to apply for a grant in more than one of these jurisdictions should ensure that they can satisfy the most stringent requirements in all of the jurisdictions in which they are applying. For example, the tests of inventorship in Australia are less precise than the tests used in the United States, therefore an applicant should ensure that their Australian application satisfies the standards required in the United States, to facilitate a later application in the United States or Europe.
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© White SW Computer Law 2006
This paper is a guide only and should not be used as a substitute for legal advice, readers should make their own enquiries and seek appropriate legal advice.