It is advisable to discuss matters of patent entitlement with your patent attorney. This should be done before filing a patent application.
An incorrect claim to entitlement can invalidate a patent.
Generally, inventors must have made a ‘material contribution’ rather than having merely followed instructions.
An employer may or may not be entitled to his or her employee’s invention. Whether this is the case depends largely on whether the inventor invented the invention during the ordinary course of his or her employment.
The fact that the employee used his or her employer’s resources to design or make the invention is not of itself determinative of the employer’s right to entitlement. Neither is the fact that the employee allowed his or her employer to use the invention.
Any issues relating to the employment of an inventor should be discussed with your patent attorney.
Entitlement to an invention can be assigned to another party. When this occurs there is a transfer of rights.
It is important that written assignments are formally recorded at the patent office.
Whether a contribution is material or not requires a full consideration of the ‘inventive concept’ involved. In court, the ‘inventive concept’ will generally be considered with reference to the patent specification in full. This includes a consideration of the patent claims defining the invention.
After isolating one or more ‘inventive concepts’, a court will consider the contribution made by each inventor and whether the contribution made was a ‘material contribution’.
Level of Contribution
In Australia, several different tests have been developed for the purpose of considering whether a person involved has made a ‘material contribution’.
One test is known as the ‘but for’ test. This test requires that the invention would not have come about ‘but for’ the contribution of each inventor. The ‘but for’ test is not a universally applied test. Neither does the test extend to mere financial or managerial involvement. The ‘but for’ test has, however, found application in instances such as those involving preliminary research which subsequently led to a discovery.
It is not possible to articulate a universally applied test. All that can be said is that each inventor’s contribution must fall within the scope of the expression ‘material contribution’. Such a consideration necessarily depends on all the surrounding circumstances.
When a person constructs a prototype, that person will generally only be an inventor when the actions of that person go beyond merely following instructions to the provision of a ‘material contribution’.
When considering inventorship, courts generally have regard to the invention as a whole and the relationship between the various persons involved, including instances of collaboration.
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