Community Forum – Inventors Names on Patent Applications
How do you list inventors’ names on patent appliations?
It is a long standing practice in the academic community to list authors of scholarly works in the order of their relative contributions. This is especially true of the first-named author. However, United States Patent law places no legal significance on the order of the inventors’ names on a patent application. The two-worlds collide when inventors, like authors, place a significance on the name order of the inventors on a patent application.
How does your company address this issue? Do you identify the order of inventors’ contributions? How do you determine the first-named inventor? Who makes this determination or resolves disputes when the inventors may not agree: the inventors themselves, the R&D management, or the patent department? – E. Martin Remick, Ph.D., General Patent Counsel, Michelin North America, Inc.
In instances where the first named inventor is clear, and any other contributing inventors agree, we place the name of the primary inventor (the individual who has made what appears to be the major contribution to the invention, or who was the initiator of the idea) as the first named inventor. Other inventors are listed in order of their contributions. We use the preliminary invention disclosure (PID) as a vehicle to doing this, so that there is clear buy-in, agreement amongst the inventors, and final sign-off from those involved. The PID includes space for this, and asks the inventors to agree on major to minor contribution. Each person signs the form signifying their agreement and briefly listing their contribution. This way, there is a permanent record in the application file should there be any later questions. It is much easier to get this agreement at the time the application is initially prepared, than at a later date.
In instances where inventorship is distributed, and there is no clear primary inventor, we list the inventors alphabetically. Again, the preliminary invention disclosure is the vehicle for this and all inventors sign the form indicating their agreement with the listing.
This method appears to minimize any questions or disputes with respect to the order of the inventors on the application and granted patent.
– Tim Barber, Intellectual Property Specialist, AstenJohnson, Inc.
The problem stated is one of the two problems of attribution: deciding which names to list as inventors in the first place, and then deciding the order in which to list the names. Many inventors consider the order of names to indicate something about relative contribution to the invention, so it’s important that there be agreement on the order. Listing the names alphabetically is a cop-out, and will make everyone unhappy (except perhaps Aaron Aardvark).
In my company (an electronic systems company), attribution was first established when an invention or trade secret was disclosed, that is, expressed in a formal written description. The inventor would submit the disclosure and his or her local management, who should be close enough to the work to know “who did what”, would try to make sure that it was coherently written, had worthwhile content, and had proper attribution. In some cases this would require negotiation between the supervisor and the would-be inventors. The local manager would sometimes consult the patent attorney assigned to that R&D organization for help in deciding whether a particular individual had contributed to the disclosure sufficiently to be listed as an inventor.
When the disclosure progresses to the point of filing a patent, it is time to revisit the attribution – because sometimes additional inventing occurs, and the patent attorneys may want to merge several disclosures to create a stronger filing.
In one case I remember, two competing inventors each submitted separate disclosures covering what they each thought they had invented. The matter was discussed (and argued) up the management chain, in consultation with the company patent attorneys. The difficulty in resolving this case may have had something to do with the facts, but probably had more to do with its context: there had been a long-standing competition, verging on hostility, between the two individuals. Despite great efforts, we were never able to achieve more than an armed truce, and in time, both of them left the company.
In the final analysis, R&D management is responsible for ensuring proper attribution, including the order of names. However, in doing this, management must work within general policy as articulated by the company patent office, and must attempt to achieve consensus among all the inventors and would-be inventors. It’s one of the many balancing acts that local management has to perform.
– Art Chester, IRI Emeritus
Our R&D organization files 50-70 patents a year, I’ve been in technical management for 25 years.
It is usually obvious who the primary Inventor is. Our R&D Management will ask the main Inventor to write a disclosure brief and to name co-inventors. This gives that individual the opportunity to recognize the contributions of others. There has never been a dispute for any position other than first Inventor. The source of this is the practice by the Patent Office of listing the patent by the first named inventor and “et al”.
As we operate in a strong team environment, it is considered “Bad Form” to raise a dispute over first listing. In those rare cases we ask for research notebook pages. The patent attorney then checks the content and dates and awards first position to the first to conceive the jist of the invention. In thirty years we have only had one occasion when two inventors would not accept the assignment. In that case, we deferred to our vice-president of research. He wisely got both inventors to agree that it was a close call. He then proposed and got agreement to decide by coin toss.
– Pat Moore, Development Director, Milliken Research Corporation
In our organization, we have not had issues with the order of co-inventor names on a Patent Application. When drafting an Application, our Patent Attorneys simply use the order in which the inventors’ names are listed on the Invention Disclosure form that was submitted. Typically the person who completes the Invention Disclosure form is the primary inventor, and will list themselves first in the Inventor section of the form, though this can vary too.
Obviously it’s critical to include all of the co-inventors in order to be in legal compliance, but we have never had questions or controversy regarding the order in which inventors are listed. We do not specifically reward employees for getting patents filed/issued, nor do we recognize primary versus secondary inventors – so there are really no incentives for them to have their name higher or lower on the list. There are likely other organizational-culture aspects that contribute to this as well.
– Tom Balsano, Technology Manager, Solvay Advanced Polymers
Yes, Inventorship is a potentially touchy subject. Historically our company has listed inventors alphabetically; we recognize that when a patent is referenced it favors inventors who appear earlier in the alphabet – leading to more significance being given to these contributors. However, we were not prepared to go into the hell-hole of who made a bigger or lesser contribution to determine naming order. I think that the spirit of inventorship should be seen in the light of joint ownership of a patent. Each owner of a patent (in the absence of assigning his/her rights and/or a business contract) has 100 % of the rights and title under patent law. Therefore an inventor, irrespective of contribution, has the same full stature as any other inventor irrespective of where their names appear in the inventive entity – yes it does not address nor salve egos but that is something one has to deal with from a people management perspective.
Although outside the primary question asked regarding inventorship naming order – I want to share a glimpse on what is for me an even more critical piece namely: “ Who should be listed as inventors on a patent?” The counsel we received was to change our Patent Inventor Statement (it had a field for names of “inventors” originally intended to track contribution to particular nuances of the IP in question) to Patent Disclosure Statement without labeling contributors as inventors. The rationale behind this is that once one gets into the prosecution phase some elements of the claim-set may be eliminated – we task our patent attorney then based on the actual issued claim-set to determine the final inventive entity for this particular piece of IP. This approach has eliminated the potential conflict that can arise between R&D Management, Inventors and the Legal Department. In the event that somebody has appeared as an early contributor (potential inventor) and prior art has turned up that eliminates that person’s contribution from the IP during prosecution, the individual’s name is removed from the inventive entity list. When this happens it presents a great opportunity to talk to the individual that his/her idea was worthy but the fact that it was already known or anticipated eliminates them from the list of inventors for this particular piece of IP (during this discussion, the individual is again asked to review the final claim-set and if he/she can point to at least one claim that he or she has made a contribution to then they would remain part of the inventive entity). Now once the patent has been filed it is fairly common for us to also publish an article in our industry related journals and at conferences on this subject matter – at these events we then allow many more contributors (including support personnel) to be listed as well as leaving it up to the group to decide on the naming rank order on the publication.
– Johann Venter, Director of R&D, Champion Technologies Inc.
Beyond determining that each inventor contributed to the claimed invention, we generally do not spend a significant amount of time “ranking” the individual inventors’ contributions. As stated, the order on U.S. applications does not have legal significance, also, it may not be clear at the time of filing which claims will actually be allowed. If there is a portfolio of applications being filed, the inventor sequence may vary so that each inventor is the first named on at least one application.
– Christina Degnore, IP Manager, General Motors
The patent department determines the order of inventors and it is not based on the relative contribution. There is no dispute resolution.
– Bruce Gustafson, Director, Strategic Technology, Eastman Chemical
I have patents from several companies including AT&T Bell Labs and Motorola. All primarily used relative contribution, but in the case of equal contributions, alphabetical order was used.
– Bonnie J. Bachman, PhD, IRI Emeritus