Are Technology Suppliers Also Inventors And Do They Have A Right To Any Patented Technology That They Have Contributed To?
One of our clients just had this situation: upon drafting a patent application we have found out that the corresponding invention disclosure is not enabling. It turned out that the technical details for implementing an important part of the invention are with an independent supplier that contributed a central component of the invention.
What does that mean?
Businesses often collaborate with outside experts. These experts can become inventors. Many business owners think that because they have hired and paid someone to assist in developing a product, they own the results. Or, they think that it was their idea, and they don’t need to add these experts as inventors.
Many times, they don’t even mention it to their patent attorneys, thinking it is not important.
That is a big mistake.
In some countries such as in the USA, if an outsider is an inventor of just one claim he can have equal rights to the entire patent. And whether they are listed as an inventor or not, they may be able to license their patent.
Example "Ethicon-Situation": In 1989, Ethicon, a manufacturer of surgical instruments, filed a patent infringement suit against a competitor, United States Surgical, over U.S. Patent No. 4,535,773. The inventor named on the patent was Dr. Inbae Yoon. Yoon granted Ethicon an exclusive license to practice his invention. The patent had 55 claims but only two claims were asserted against U.S. Surgical: claims 34 and 50. During the lawsuit, U.S. Surgical learned of a co-inventor named Young Jae Choi. Choi was an electronics technician who collaborated with Dr. Yoon for 18 months. US Surgical asked the court to add Choi as an inventor. The court agreed finding that Choi had co-invented claims 33 and 47. Two claims that were not even involved in the lawsuit. The court found that there was corroborating evidence that supported Choi’s assertions that he was an inventor. The evidence was dated notes and drawings that Choi had along with his technical abilities as an electronics technician. The court dismissed Ethicon’s lawsuit because Choi had granted U.S. Surgical a retroactive license to the patent.
To avoid this, carefully identify all inventors and have them sign an assignment agreement. This agreement transfers their rights to a single entity, such as an individual or the company that is going to exploit the patent.
Even better, have all employees sign an agreement requiring them to assign any IP rights to the business and cooperate in the patent process. Consultants should enter into similar agreements when they are hired.
Correctly naming the inventors is critical in a patent. Care should be taken to record the contributors and the dates of the developments in the process. Have everyone involved in the development sign agreements to transfer their rights to a single entity. Keep a list of everyone involved and their respective contributions. Review this with your counsel to determine the inventors are named. You don’t want unwelcome inventors showing up later.
It requires planning and a little record keeping, but it will ensure that you don’t lose your patent.