SMEs and inventorship disputes

SMEs and inventorship disputes article image
In this article we consider the importance for SMEs to identify the inventors of a patent application correctly and steps that can be taken to prevent inventorship disputes. Resolving inventorship disputes and the ownership of patent rights is very difficult.  A US judge once famously commented that "(t)he exact parameters of what constitutes joint inventorship are quite difficult to define.  It is one of the muddiest concepts in the muddy metaphysics of patent law...". As the Australian Patents Act provides that a lack of entitlement is a ground for opposing the grant of a patent or for having a granted patent revoked, an SME considering filing a patent application is well advised to establish its entitlement to the grant of a patent from the outset and before any patent application is filed. The Patent Act provides that a patent for an invention may only be granted to (i) the inventor, (ii) a person who, on the grant of a patent, would be entitled to have the patent assigned to it, (iii) a person that derives title from persons listed under (i) and (ii) above, or (iv) the legal representative of a deceased person mentioned under (i), (ii) or (iii).  A patent applicant may derive entitlement to the grant of a patent from an inventor by virtue of (i) assignment or (ii) an employer/employee relationship between the patent applicant and inventor. Assignment of Patent Rights Patent rights are personal property and as such are capable of transfer by way of a written assignment.  For example, where an invention is created by an independent contractor upon instructions from an entity, an assignment in favour of the entity will be required to transfer the rights in the invention from the independent contractor. Employer/Employee Relationships and Ownership of Patent Rights The Patents Act does not include any specific provisions directed to the entitlement of an employer’s rights in inventions devised by its employees.  Rather, an employer’s rights are governed by Australian common law.  The general rule is that an invention made by an employee in the course of the employee’s employment will belong to the employer. When determining entitlement in employer/employee relationships it is necessary to consider all circumstances surrounding the relationship.  That includes aspects of the employee’s contract of employment, the position of the employee with the employer and whether time and materials of the employer were used in developing the invention.  Where an employee’s duties do not normally include inventing, problem solving or the like, that factor will weight against the employer having any entitlement to the invention. Practical Steps to Avoid Entitlement Disputes It is vital that SMEs ensure that their employment contracts with relevant employees and their contracts with independent contractors contain appropriate provisions governing ownership of inventions made during the course of such contracts. Also, before filing a patent application an SME should ensure that inventorship of the invention is ascertained and that the SME is able to establish its title from all inventors. André Meyer is an associate with Spruson & Ferguson Patent and Trade Mark Attorneys


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27 Apr 2017
This is a colossal help. Thanks for captivating the time to share it.

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