Who Invented It? Streamlining Determination of Patent Inventorship

Authors

Henry H. Perritt, Jr., Chicago-Kent College of Law, Illinois Institute of Technology

Abstract

Disputes over inventorship are common in industries where new technology is important. Patents are invalid unless correct inventors are named on the patent, even when all the inventors have assigned their rights to the enterprise applying for a patent. The complexity of modern technology is such that an invention qualifying for a patent rarely is the work of only one individual. Employees and former employees frequently claim that they have been left off patent applications wrongfully. Patent law provides a variety of ways to correct inventorship both while such applications are being prosecuted in the U. S. Patent and Trademark Office and after a patent is issued. Access to these means of correction is unnecessarily limited by unduly restrictive understandings of Article III standing requirements. Often an inventor is denied access to the courts because he has assigned his rights to his employer, even when he challenges the efficacy of the assignment. Several alternatives exist to streamline the application of the standing requirement, including a more robust understanding of the distinction between inventorship and patent ownership, an unambiguous recognition of reputational injury to an inventor as injury in fact, an appreciation of the future interests likely involved in an assignment, and an implementation of mechanisms within a firm that investigate and resolve inventorship disputes.

Recommended Citation

Henry H. Perritt, Jr., Who Invented It? Streamlining Determination of Patent Inventorship, 79 U. Mia. L. Rev. 72 (2024)
Available at: https://repository.law.miami.edu/umlr/vol79/iss1/4