Patent applicants often name someone as an inventor who isn’t—or they may fail to name someone who is. Some companies, as a matter of policy, list the CEO as an inventor in all their patents ”out of respect.” Sometimes colleagues are named because they will be rewarded monetarily for patents where they are listed as inventors. And conversely, actual inventors may be omitted, either accidentally or on purpose. When that happens, it can be hard to enforce patent rights.
Consider this scenario: Company A has a patent and sues Company B for infringing it. Company B then discovers that X should have been listed as an inventor, so B pays X for his rights in the patent. Now B owns the patent jointly with A and cannot be sued for infringement.
So who counts as a coinventor? That’s the question in Nartron Corp. v. Borg Indak, a case recently decided by the U.S. Court of Appeals for the Federal Circuit, which handles all U.S. patent appeals. Nartron holds a patent for a car seat with lumbar support, which it had designed for another company, Schukra U.S.A. Nartron sued a third firm, Borg Indak, for patent infringement.
In its defense, Borg argued that a Schukra employee had suggested an ”extender” component for the lumbar support adjuster, that the extender had appeared in one of Nartron’s patent claims, and that the Schukra employee had not been listed as an inventor. Borg noted that the law required all owners of a patent to join in any infringement suit, that Schukra’s employee was such a co-owner, and that the employee had in fact not joined in the suit. Therefore, Borg argued, it could not be sued for patent infringement.
The Nartron case turned on whether the Schukra employee was an inventor, defined as anyone who contributes to any claim in a patent application. What “contributes” means, though, is not always clear.
Last year, the original trial court agreed with Borg that the Schukra employee was a coinventor and dismissed Nartron’s lawsuit. In March of this year, the Federal Circuit reversed the decision after finding the Schukra employee’s contribution was “insignificant.” Extenders were well known, the higher court found, and including the extender as part of the claimed invention was ”merely the exercise of ordinary skill in the art.” Over the course of three different cases, the court has stated:
One who simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of the claimed invention as a whole does not qualify as a joint inventor. A person will not be a coinventor if he or she does no more than explain to the real inventor concepts that are well-known in the current state of the art. Moreover, a joint inventor must contribute in some significant manner to the conception or reduction to practice of the invention and make a contribution to the claimed invention that is not insignificant in quality when that contribution is measured against the dimension of the full invention.
According to the Federal Circuit, then, coming up with an idea claimed in a patent application doesn’t necessarily make you an inventor. Unfortunately, such pronouncements are mere guidelines, and there is still no litmus test for deciding who is and who isn’t an inventor.
There are a couple of saving graces. First, the list of inventors given in a patent is presumed by law to be correct. So anyone who alleges that a patent should have named someone as an inventor must provide clear and convincing evidence. In many cases, such evidence is hard to come by. One interesting feature of the Nartron case is that everyone agreed that the Schukra employee alone did in fact contribute the idea of the extender. The only point of contention was whether the contribution was significant. Expect to see more patent battles over inventorship, then, turning on what it means to be “significant.” Fortunately, if mistakes are made, credit for inventorship can be corrected even after the patent is issued.