Name the wrong inventors, lose your patent

By Nicholas Tyacke and Tara Walker.

Key Points:
Not naming all the "actual" inventors, or naming persons other than the "actual" inventors, renders a patent void and liable to revocation.

If a patent is granted to several persons jointly, must each of them either be, or claim through, an inventor?

That was the question, not previously addressed by an Australian court, that Justice Finkelstein was called on to answer in Conor Medsystems, Inc. v The University of British Columbia (No. 2) [2006] FCA 32. That case concerned two patents granted jointly to Angiotech Pharmaceuticals, Inc and the University of British Columbia ("UBC"). Each patentee claimed title to the inventions by assignment from the US inventors. However, UBC claimed title from two only of several persons claiming to be inventors.

Section 15 of the Patents Act 1990 (Cth) specifies to whom a patent may be granted. Importantly, it provides that a patent may only be granted to the person who is, or claims through, the inventor of the invention.

Construing this section, Justice Finkelstein held that:

• Where there are several "actual" inventors, the patent must be granted to all of them in order to be valid. As such, a patent that is issued to only one inventor of a joint invention will be void.
• Where a patent is issued jointly to two or more persons, one of whom was not an "actual" inventor, the patent will also be void.
• A patent cannot be granted to the importer of an invention unless he/she had the consent of the inventor.

He did not decide whether the grounds of revocation were made out on the facts, or whether, if made out, the making of a revocation order was discretionary or mandatory.

However, the decision in Conor Medsystems emphasises the need to ensure that all "actual" inventors, but only the "actual" inventors, of a patented invention are named as inventors. The failure to do so may result in the loss of the patent for all inventors.

The result intended to be achieved by naming persons other than the "actual" inventors as inventors can be achieved by other means without the risk highlighted by Conor Medsystems, as can the result intended by naming less than all of the "actual" inventors. Both results can be achieved by way of assignment, the "actual" inventors assigning their interests to a subset of themselves, or to a third party (in addition to one or more of the "actual" inventors, or to the exclusion of all of them), before or after the grant of patent.

In view of Conor Medsystems, joint ownership (at least prior to assignment) where more than one "actual" inventor is involved is unavoidable. However, joint ownership of a patent should be avoided unless there is a very clear agreement between the joint owners as to how exploitation will take place. It must be understood, for example, that a joint owner may exercise the invention the subject of the patent, but cannot license anyone else to do so without the permission of the other joint owner(s). To ensure that all inventors fully understand their rights and entitlements as joint owners, these rights should be clearly specified by way of an agreement between them.