Unravelling Inventorship

Inventorship, who made an invention, is one of the most important concepts under the U.S. patent system. Incorrect inventorship determinations result in patent invalidity not only because U.S. Constitution requires granting patents to true inventors, but also first-inventor- to-file novelty inherited many aspects of first-to-invent novelty which depended on inventorship whether to include prior inventions as prior art. Correcting inventorship may result in sharing patent exclusivity with competitors, which forfeits profits necessary to recover expensive development costs. However, the standard to determine inventorship has been called muddy by judges and commentators because neither the Patent Act nor case law provide any clear guidance. The standard has become overinclusive to overcome obstacles to obtaining patents when inventors work jointly on the same research project because the first-to-invent system included prior inventions as prior art even if they were kept secret (secret prior art), unless the same inventorship exception enabled inventors to remove the prior art. To address the obstacles, Congress has introduced multiple exceptions, which have resulted in an unnecessarily complex legal framework.

Under the current standard, any researchers who are willing to exchange research results and ideas are subjected to the risk of a joint inventorship dispute. This article proposes a reform to remove the obstacles which America Invents Act (AIA) was unable to address. It proposes the adoption of a simplified legal framework which would remove secret prior art and prior art during the grace period from obviousness determinations, regardless of inventorship. By eliminating any necessity for the overinclusive inventorship standard, this article proposes an improved inventorship standard to include only inventors who collectively made inventive contributions by revitalizing the collaboration requirement and inventive nature requirement for contributions.