Disentangling Inventorship

Abstract

Proper naming of inventors on patent applications is of paramount importance under US law. For example, failure to name an inventor (even unintentionally) can have far-reaching consequences, including calling into question the patent owner's ability to enforce the patent or transfer rights in the patent to others. Particular complications arise in the university context, because the legal standards for inventorship often diverge from researchers' expectations based on authorship of papers, participation in a research team, or service in a supervisory capacity An approach that aims to educate those involved about the legal standards set out by the Patent Statute and the US courts can alleviate many potential stumbling blocks. The first step in that regard is to implement a carefully-crafted invention disclosure form for use at the outset of the patent application process. One such form is attached as an Appendix to this article.