Inventorship: Why It Is Such a Thorny Issue

by Ryan P. O'Connor

On the topic of inventorship, there are several concerns that need to be parsed. These issues include business value, legal/technical issues, and personal credit.

(i) Business Value

There should be an intentional decision to bring more people into innovation to develop inventions. This will help you collaborate and improve concepts, test theories, challenge assumptions, etc. Enterprise value should improve, if you are working on (inventing) the right things.

Organizations should encourage the submission of invention disclosures. If something is not written down, it does not exist! Feedback given to inventors should keep this in mind. Additionally, invention disclosures are useful even when the concept is not patentable. Documentation of trade secrets and know-how is good practice.

While business value ultimately should drive everything, value can be destroyed if you don’t get the legal issues right, or if you don’t properly recognize (and guide) individual and team contributions. This leads to the next two aspects.

(ii) Legal/Technical Issues

Legally, the determination of inventorship is complex and actually is a function of the specific intellectual-property right that is sought. Consider three of the primary strategies to leverage a piece of innovation: Patent, Trade Secret, or Publish. The authors of a paper to be published might include not only the inventors but others who helped write the paper and perhaps a unit manager. The inventors of a trade secret would generally include all those who contributed in some fashion to the creation of the know-how.

On the other hand, the inventors to be named on a patent can be a much smaller set of people. Why? Under U.S. patent law, an inventor for a patent is a person who has contributed to the conception of the invention, but not necessarily to the reduction to practice of the invention. A person who solely helps reduce to practice, regardless of the extent of the work (e.g., experiments or analysis), is not an inventor.

Don’t expect your technical folks to try to make these legal determinations, which is why an invention disclosure should tend to include rather than exclude.

(iii) Personal Credit

It has been observed that some inventors omit the contributions of others in an attempt to claim full credit for the innovation. In other cases, the authors of disclosures seem to sincerely believe they are the sole inventors but do not understand the patent law.

Individuals desire to be recognized for their contributions. Reward systems can be considered and are utilized at some companies. Inventors can be recognized in ways beyond a formal system. Many companies simply expect that as part of the salaries paid to employees, they will write up their inventions and help legally protect the IP.

By giving appropriate credit to inventors, there may be less incentive for intentional exclusions, plus enhanced teamwork—leading to improved technology and business value. Try to encourage a collaborative attitude for R&D and IP!