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Patent inventorship: not always so patently clear

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Patent inventorship: not always so patently clear

30th July 2018

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The South African Patents Act No. 57 of 1978 (“the Act”) does not define “inventor” per se, although it is generally understood to refer to a natural person who conceives of something novel in the context of patentability criteria. Unless otherwise provided or agreed, the inventor is the first entitled to file a patent application to have his/her invention protected. Where an inventor is employed to research/invent on behalf of an employer, such inventor has a right to be cited on a patent application as an inventor, whilst the invention is generally assigned to the employer by way of a general assignment in the employment contract, or by a specific assignment for the patent application in question, with the employer being the rightful owner/assignee of the patent application.

Patent applications may be filed in the names of multiple joint or co-inventors. All cited inventors must have contributed to the invention, although not necessarily in equal parts. South African courts have not had to deal with the question of what such a contribution entails, but it is generally considered that each contribution must consist of an inventive step which is not merely imparting knowledge which is known in the art.

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A test for identifying an inventor was formulated in the Canadian case of University of Southampton’s Applications [2006] RPC 31 (CA), as follows: Firstly, one must identify the inventive concept in the patent or patent application and, secondly, determine who was responsible for the inventive concept. A person is not an inventor simply because he or she contributed to the invention, for instance by being involved in a research project, or performing experiments pertaining to the invention under the supervision of a research leader. It is important to distinguish between claims containing an inventive contribution and those merely supporting the inventive claim, since contributions towards the latter does not always give rise to patent inventorship.

In the United States case of Hess V Advanced Cardiovascular Systems Inc., 106 F.3d 976, 979-980 (Fed. Cir. 1997) it was confirmed that a person cannot be an inventor if the contribution is not novel or inventive. In this case, a plastics engineer sought to be added as an inventor to a patent for a new heart catheter. The engineer was tasked with identifying suitable materials for use in the new heart catheter which was conceptualised by heart surgeons. The engineer explained the properties of various plastics to the surgeons and, therefore, held that his contribution should allow him to be cited as an inventor. The court stated that simply listing well known properties, which could be found in available literature, including textbooks and the Internet, does not provide an element of inventiveness and therefore the engineer cannot be referred to as an inventor.

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In the United States, in order to identify the inventor, one must look to the elements that comprises an invention [Burroughs Wellcome Co. v. Barr Laboratories Inc., 40 F.3d 1223, 1227-1228, 32 USPQ2d 1915, 1919 (Fed. Cir. 1994)]. Firstly, an invention comprises the conception of an idea or subject matter and, secondly, the idea must be reduced into practice. Conception means that the idea must be “definite and permanent” so that the ordinary person skilled in the art would be able to reduce that idea into practice without requiring additional research. Reduction may either be actual or constructive. Actual reduction refers to the working of the invention, whilst constructive reduction is defining reduction with the mind, referring to the enabling disclosures contained in the patent specification.

Therefore, that which is claimed in the patent or patent application must refer to the whole and complete concept in such a way that the ordinary skilled person may work the invention. The patent or patent application may also include claims which are not standalone inventive but contributes to the reduction of the invention in practice.

Europe also applies the conception and reduction test as followed in the United States and adds that the weight of each inventor’s contribution may be determined in the sense that without the contribution, the invention would not have existed. The European Commission provides the following guidelines (which may overlap) for distinguishing between a true inventor and a non-inventor:

The inventor conceives of the idea, whilst the non-inventor merely puts forward a hypothesis. Whilst the hypothesis is the starting point for conception, it is not a fully developed idea unless a solution is also formulated;

the inventor contributes materially to the development of the idea (which may include formulating a solution to the problem hypothesised), whilst the non-inventor passively follows the instructions imparted by the inventor;

the inventor provides solutions to the problems, whilst the non-inventor merely performs routine tasks; and

the inventor implements the idea (reduction step), whilst the non-inventor only executes results testing.

[European IPR Helpdesk: Fact sheet – Inventorship, Authorship and Ownership, March 2013]

In terms of South African patent practice, it appears from Stanelco Fibre Optics Ltd’s Applications [2005] RPC 319, that reduction into practice is not a necessary component for determining inventorship.  To infer that reduction of the invention as a whole is not a necessary component in South African patent practice, would be incorrect since section 61(e) of the Act provides that a patent may be revoked if the specification does not sufficiently describe the invention to enable the ordinary person skilled in the art to carry out the invention. What the Stanelco application means is that to identify the inventor of a specific claim, one does not need to refer to reduction, only conception. Whether the claim infers proper reduction or not is a separate query and will influence the validity of a patent application.

Therefore, to determine the true inventor(s) of a patent, one needs to measure the quality of a contribution and not the quantity of contribution(s) by determining the following:

Firstly, every contribution by an inventor must be inventive; and

Secondly, that the invention would not have been devised without such contribution.

In conclusion, it is important to scrutinise the contribution of inventors, or persons aspiring to be cited as such, by determining if such person(s) actively contributed to the realisation of the inventive concept as protected by the patent claims. If the invention would not have materialised without a specific person’s specific contribution, such person would qualify as an inventor. A person that merely performed a task, or acted on instruction towards proving a concept or researching and documenting the invention would not necessarily have a claim to inventorship.

 

Written by Jaco Theunissen and Christina Louw from KISCH IP

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