In Australia, as with other major jurisdictions, it is important to ensure that the correct inventor(s) are named on a patent application, as including a person who is not an inventor or omitting a person who should be named, can affect the validity of the patent itself.
In the absence of an assignment of patent rights to a company (such as in a Deed of Assignment or an employment contract), the named inventors are also the owner’s (applicants) of the patent application. However, just because someone is named as an inventor, does not mean that they have to be an applicant or owner. The inventors can come to other arrangements about ownership once the inventors are correctly named. It is often as simple as an assignment or rights to get the applicant or owner correct. But first, you need to ensure that the inventors and correctly named, with everyone who should be there and no-one who should not.
Deciding on whether a person is an inventor depends on the circumstances surrounding the conception of the invention and its reduction to practice.
A good rule of thumb is if someone conceived or developed proof of concept for subject matter that forms at least one claim of the patent application, then they should be named as an inventor. Examples include:
- A person who developed novel (non-routine) experiments and/or conducted those experiments with initiative/ingenuity;
- A person who interpreted data and found via their interpretation an unexpected result;
- Contributors to brain-storming sessions who contributed to conceiving the inventive step; and
- A person (such as a director) who conceived the original ideas which led to the direction of research.
Conversely, a person is not considered an inventor if they merely carried out defined instructions or provided general assistance to the research or development of the invention (such as laboratory assistants, heads of team or general persons skilled in the art).
In the end, if someone had input into what is considered to be “the invention”, then they should more than likely be named as an inventor.
The above should provide some guidance to naming the correct inventors. If in doubt, contact us to determine the correct inventorship of your patent to prevent potential loss of rights.