Inventorship could be the million dollar question. In a university setting where collaboration is common place – who is an inventor? Most scholars understand “authorship,” but this concept shouldn’t be confused with “inventorship.” Being listed as an author on a journal article discussing the invention does not automatically make one an inventor on the patent itself.
As a general rule, an inventor is one who has substantially contributed to the “conception” of an invention. Whereas, someone working at the direction of another, using routine skill without making a substantial conceptual contribution, is not considered to be an inventor under U. S. patent law. Credentials, such as degrees or titles, do not play a role in whether someone is an inventor on a particular patent. Disputes regarding inventorship often arise when a person with involvement in testing or construction of the invention believes they should be named as an inventor. Whether that person should be named as a joint inventor is not simply a courtesy or straightforward yes/no decision, it is a fact-intensive inquiry based on conceptual contributions of the person to the invention.
Two real world examples illustrating these points are provided below. In the first one, highly reputable scientists working in collaboration with other inventors were found by a court not to contribute to the conception of a particular invention. Burroughs Wellcome Company was the owner of six patents that claimed various preparations of 3′-azidothymidine (AZT) and methods for using that drug to treat HIV, a retrovirus. Each of these patents named the same inventors, all of whom were employed by Burroughs Wellcome. Tests performed at Burroughs Wellcome facilities showed that AZT had activity against murine retroviruses. Scientists at the National Institutes of Health (NIH) were able to develop a test that could demonstrate a compound’s effectiveness against HIV in humans. Burroughs Wellcome had sent a sample of AZT to the NIH. In an accompanying letter, Burroughs Wellcome reported the results of the murine retrovirus tests and asked that the compounds, including AZT, be tested for activity against HIV. The NIH test found AZT was active against HIV.
A dispute ensued that questioned (?) whether NIH scientists were also joint inventors. The court held that,
Conception is the touchstone of inventorship, the completion of the mental part of invention. . . . But an inventor need not know that his invention will work for conception to be complete. . . . He need only show that he had the idea; the discovery that an invention actually works is part of its reduction to practice. Burroughs Wellcome v. Barr 40 F.3d 1223 (U.S. Fed. Cir.1994)
The NIH scientists were held not to be joint inventors “because the testing confirmed the operability of the inventions, it showed that the Burroughs Wellcome inventors had a definite and permanent idea of the inventions. It was part of the reduction to practice and inured to the benefit of Burroughs Wellcome.” The court reasoned that “the [NIH] testing was brief, simply confirming the operability . . .” Id. Thus, the involvement was not considered substantial enough to warrant the NIH scientists be listed as co-inventors.
In a more recent case, Kent Displays, Inc. (“KDI”) hired an associate professor at Kent State to work on a project for KDI which entailed the synthesis and development of chiral additives for improving portable Liquid Chrystal Displays (“LCDs”). The professor hired a post-doctoral researcher to synthesize the chiral molecules. Both the professor and the post-doctoral researcher were listed as “Co-Research Institution Investigators” on grant applications filed with the National Science Foundation, and the post-doctoral researcher was to work independently and to have ideas of his own while working on the KDI project. The prepared compounds were tested at KDI.
The post-doctoral researcher eventually left his position with Kent State. A patent was later obtained that claimed chiral compounds made by the professor after the post-doctoral researcher left his position. The professor and KDI employees were named as co-inventors. The post-doctoral researcher was not named as a co-inventor. The patent specification disclosed a synthesis protocol developed by the post-doctoral researcher as the protocol utilized to synthesize the claimed class of chiral compounds. The post-doctoral research sued to be named as a co-inventor. The court held that,
A joint invention is the product of a collaboration between two or more persons working together to solve the problem addressed. . . . People may be joint inventors even though they do not physically work on the invention together or at the same time, and even though each does not make the same type or amount of contribution. . . . Each joint inventor, however, “must contribute in some significant manner to the conception of the invention.” . . . Conception of a chemical compound “requires knowledge of both the specific chemical structure of the compound and an operative method of making it.” Falana v. Kent State University (Fed Cir. 2012)
In this case, the court reasoned that the collaborative contribution of the post-doctoral researcher of the synthesis protocol was a sufficient contribution to the conception of the claimed compounds to render him a joint inventor.
At a university where collaboration is king, inventorship can be tricky and differs significantly from authorship as was illustrated here. This issue is handled routinely by the staff of the Emory Patent Group (EPG) in the technology transfer office. Disclosure your discovery and EPG will work through the issues and make a legal determination.