Gone are days when the ‘eureka’ moment happened. Today, when inventions are gaining complexity by involving scientists from multidisciplinary fields it is obvious to have a situation where inventions are bound to have multiple co-inventors. Many inventions would be the result of such multiparty collaborations. Creation of intellectual property seems easy by collaboration, but it normally raises a pertinent question, who or which entity owns a patent, on a new process or product. Inventors are like the heart of any invention. They pump life into any invention from the time of its conception to the time it is put into practice. No doubt every patent law requires that the patent application must be filed by the inventor either alone or jointly with other inventors or through their assignee. Inventorship is, therefore, recognised by law as a primary requirement for filing a patent application. What happens when the patent application or an issued patent contains an incorrect listing of inventors? Does the deliberate or unintentional act of missing the name of an inventor extinguish the right of the missed inventor in a patent? What happens if an unnamed inventor grant license to the rivals of the patentee? Is it possible to correct the mistake in the list of inventorship? These questions appear to be simple but are most complex to get a legally sound answer.
‘Inchoate property’ in the invention
Legally speaking right of the inventor in any invention subsists when he conceived the invention. For instance, Lord Walker in Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc [2007] UKH] described this concept as an “inchoate property” in the invention, when he observed that
“Before a patent has been granted for an invention there may be two (or even more) inventors, each of whom can claim to be the invention’s ‘actual deviser’ …. because each has independently arrived at the same inventive concept. Until one of them has led an application (and so long as none of them has altruistically or inadvertently published his invention to make it part of the state of the art) each has a sort of inchoate property in the invention.”
Declaration of inventorship
‘Inchoate property’ is a legal proposition which defines that a property right in an invention comes into existence when an invention is made. It stands clear and distinct from any subsequent right which may be in a patent application or patent. By the definition of inventorship under section 6 (a) of the Patents Act, 1970, an application for a patent can be filed by any person claiming to be the true and first inventor of the invention. It is mandatory to give the list of the inventors through a declaration in form 1 or form 5 (section (10(6) and rule13(6)). The declaration in Form 5 also permits the inclusion of additional inventors when the complete specification is filed after provisional. If the name of an inventor is not included in the application, the unnamed inventor will not lose his right in the patent application or be granted a patent as he is permitted to get his name included as claimant (under section 20(1) and 20(3(c)) or as an inventor (under section 28(1)).
Inventorship vs ownership
Questions about patent ownership are distinct from questions of inventorship. That is because when an invention is made inchoate property right comes into existence which is distinct and separate from any subsequent right in filing the patent application or granted patent. On satisfying the requirement of being true and the first inventor as envisaged under section 6 (a) of the Patent Act, 1970 the person gains a sort of inchoate property in the invention even when his name is not included in the inventor’s list. If two more persons are inventors each one will be acquiring an inchoate property in the invention and the property is the right to apply for a patent. That right is exclusive to them as all of the co-inventors are entitled to apply. If the name of any inventor is omitted, the right of the unnamed inventor in the invention will subsist notwithstanding such an omission either deliberate or otherwise. Such an inventor can file a separate application even by using the same description. In such a case if an opposition/interference is filled the IP office would be required to first settle the issue of co-inventors.
Consequences of omitting an inventor
In Ethicon, Inc. v. U.S. Surgical Corp. [135 F.3d 1456 (Fed. Cir. 1998)] Judge Rader discussed the rights and liberties of the unnamed inventor in the infringement proceeding in US patent 4,535,773 relating to trocars which is an essential tool for endoscopic surgery. In this case, Yoon and Choi worked together to develop the invention relating to trocars but Yoon named himself the sole inventor and obtained a patent. He granted an exclusive license to Ethicon. In 1989, Ethicon filed suit against U.S. Surgical for infringement. During the pendency of this suit, US Surgical became aware of the unnamed co-inventor Choi and contacted him regarding his involvement in Yoon’s safety trocar project. On getting a confirmation from Choi on his role in the trocar project, U.S. Surgical obtained from Choi a retroactive license to manufacture Choi’s trocar-related inventions. Choi agreed to help US Surgical with any suit regarding the US’773 patent. Armed with Choi’s license US surgical moved for dismissal of the infringement suit. The district court granted U.S. Surgical’s motion and dismissed the infringement suit. Ethicon filed an appeal.
Findings and resultant effects
The majority in this decision agreed that patent issuance creates a presumption that the named inventors are the true and only inventors. They also joined to state that inventorship is a question of law, which this court reviews without deference. Once the co-inventorship is proved the co-inventor gets the claim to the entire patent as joint invention would become joint property in absence of any agreement to the contrary. The court held that “Choi had the power to license rights in the entire patent” which he used to grant a license to US Surgical. Therefore, for layman’s understanding, this patent is invalid against Choi and US surgical as well. Since Choi is declared as co-inventor, he gets an equal share in the granted patent which includes granting of license without the consent of the co-inventor. This means failure to include anyone who contributes to the invention as a co-inventor can pose serious problems when the patent’s ownership is litigated, or the patent is enforced.
Indian law on co-inventors rights
The patent law in India is more or less the same where the rights of the co-inventors are in dispute. Section 28 for example allows co-inventors the right to be mentioned as an inventor in the application before the grant of the patent. However, such recording of a co-inventor is subjected to the condition that “the mention of any person as an inventor under this section shall not confer or derogate from any rights under the patent.”
“28.Mention of inventor as such in patent.—(1) If the Controller is satisfied, upon a request or claim made in accordance with the provisions of this section,—
(a) that the person in respect of or by whom the request or claim is made is the inventor of an invention in respect of which application for a patent has been made, or of a substantial part of that invention; and
(b) that the application for the patent is a direct consequence of his being the inventor, the Controller shall, subject to the provisions of this section, cause him to be mentioned as inventor in any patent granted in pursuance of the application in the complete specification and in the register of patents:
Provided that the mention of any person as inventor under this section shall not confer or derogate from any rights under the patent.
(2) A request that any person shall be mentioned as aforesaid may be made in the prescribed manner by the applicant for the patent or (where the person alleged to be the inventor is not the applicant or one of the applicants) by the applicant and that person.
(3) If any person other than a person in respect of whom a request in relation to the application in question has been made under sub-section (2) desires to be mentioned as aforesaid, he may make a claim in the prescribed manner in that behalf.
(4) A request or claim under the foregoing provisions of this section shall be made before the grant of patent.”
Similarly, according to section 50 when the patent is granted to two or more persons “each of those persons shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in the patent.”
(2) Subject to the provisions contained in this section and in section 51, where two or more persons are registered as grantee or proprietor of a patent, then, unless an agreement to the contrary is in force, each of those persons shall be entitled, by himself or his agents, to rights conferred by section 48 for his own benefit without accounting to the other person or persons.
However, under section50(3) unless there is an agreement to the contrary.
“where two or more persons are registered as grantee or proprietor of a patent, then,) a licence under the patent shall not be granted and share in the patent shall not be assigned by one of such persons except with the consent of the other person or persons.”
Therefore, when two or more persons are registered as a grantee of a patent they are not free to grant a license without the consent of the other persons in India.
Cautionary remarks
It is an essential requirement of the patent law of all jurisdictions to include a list of all inventors for filing a patent application. At times it is difficult to name all the inventors, or some inventors may be tempted to exclude other inventors. In the majority of cases, in the former case, it is possible to correct inventorship errors with the consent of all the named inventors before the patent is granted but in the latter case, the unnamed inventor can be a source of trouble in the infringement disputes as it happened in the Ethicon case. If the unmade inventor proves that he is a co-inventor court would not hesitate to grant him all right in the patent including the power to grant a license without the consent of the other inventor. In other words, the patent would be invalid against him and his licensee as well. Though the US Ethicon trocar dispute resolved the issue of co-inventors right to be mentioned as inventors if they are omitted during the filing of the patent application. However, this case created an anomaly of giving an absolute right to entire claims to the unnamed inventor even if their contribution to the invention is limited to only a few claims. Such a precarious situation can be avoided if the inventors/companies applying for patent consult an expert who can help navigate through the slippery turf of co- inventorship.
Inventors are the heart of an invention. Creation of intellectual property seems easy by collaboration, but it normally raises a pertinent question: who or which entity owns the patent on a new process or product? DPS Parmar addresses whether unnamed inventors have rights, with reference to Indian law and previous cases, offering cautionary remarks on the claim to patent rights as an unnamed inventor. Mr. Parmar is a Special Counsel at LexOrbis. After joining the IPAB as Technical Member (Patents) in 2011, he has been instrumental in writing some path breaking and insightful decisions on Indian patent law issues.