Ownership vs. Inventorship or Authorship

How Improper Identification of The Creator of the Work Can Affect Your Intellectual Property Rights

January 12, 2006

By: Lisa DeJaco

Many corporations confuse the concepts of owning intellectual property and creating that property.  This can give rise to real problems, because improperly identifying the inventor or author on an application for a patent or copyright can have serious repercussions. The U.S. Constitution declares the objective of patent and copyright law is "[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."  The law grants the exclusive rights associated with patents and copyrights to the inventors and authors.  Authors and inventors may assign their rights to others, and often -- by virtue of their employment or other agreements -- assign their rights even before the work is completed. Such assignments are perfectly acceptable, but do not affect inventorship or authorship in applying for a patent or copyright.

Who is the inventor? An inventor is one who contributes to the conception of the invention. A patent may have multiple inventors and all of them must be listed on the application. Those who assist the inventor after conception of the idea, explain well-known principles or the state of the art to the inventor, or reduce the inventor's idea to practice are generally not joint inventors. Each joint inventor must generally contribute to the conception of the invention, although it is not necessary that each joint inventor contribute in the same way or the same amount. In other words, it is enough that a joint inventor contributed to the conception of one claim: He or she need not contribute to each claim. 

Ramifications of improper identification of inventors. Deliberate failure to name the correct inventor or inventors may render the patent unenforceable. This deception of the United States Patent and Trademark Office constitutes  inequitable conduct. The patent will not be held invalid if the error was made without deceptive intent. If the inadvertent omission of a joint inventor is  discovered while the patent application is pending, the inventor may be added to the application. If the discovery is made after the patent has issued, a certificate of correction may be filed to add the additional inventor.

There is a second reason that naming all joint inventors is crucial in applying for a patent: Each coinventor presumptively owns a pro rata interest in the entire patent, no matter what that person's respective contributions. An unnamed inventor can obtain ownership rights in a patent and, in absence of any agreement to the contrary, may use or sell the invention without the consent of the other inventors or assignees. If a named inventor assigns his rights in a patent to a company without the agreement of all the inventors (including unnamed inventors), those inventors who were not party to the assignment are free to assign their rights to a second company. The second company would be free to use the invention without infringing on the first company's rights.

Who is the Author? Copyright law protects original works of authorship fixed in any tangible medium of expression, whether that work of authorship be literary, musical, dramatic, choreographic, pictorial, graphic, sculptural, or architectural. Copyright application forms call for two separate types of information. First, the form asks the applicant for information about the author of the material -- the person who actually wrote the story, composed the music, or the like. Later, the form looks for the identification of the copyright claimant -- that is, who is seeking to register the copyright.

A corporate entity is not the "author" of the work unless it is a "work made for hire." If the work was created by an employee in the context of the employee's job duties, or under contract, then the employer is the author of the work and should be so identified. The parameters of employment and job duties can be tricky inquiries. Some, but not all, commissioned works can constitute works made for hire.

Ramifications of improper identification of authors. If a copyright issues while the author is improperly identified, it can significantly affect efforts to protect the copyrighted material. One can only obtain a valid copyright registration in a work when one already owns the copyrights to that work.  Although copyright protection attaches to works of authorship even without a registration, a validly registered copyright is a prerequisite to an infringement suit. Someone being sued for infringing the copyright can challenge the copyright's validity as a defense to infringement. Finally, a copyright owner is entitled to statutory damages and attorney's fees for any acts of infringement that took place after the effective date of a valid copyright. Errors in validating a copyright, even if later corrected, could have a significant impact on the measure of damages in an infringement action.

For both copyrights and patents, it is important to determine who created the intellectual property. Failing to list the authors of the copyrighted work and the inventors of a patented device may leave you unable to effectively protect what you own.