Michael Van Loy, a Member in the Intellectual Property Section of the law firm of Mintz Levin, discusses getting the correct named inventors on a patent. Mike has his bachelors in chemistry and his PhD in environmental engineering from the University of California, Berkley. He also has his law degree from Santa Clara University.
Mike was named a San Diego Super Lawyers Rising Star for Intellectual Property in 2016.
Let’s listen to his take!
According to Mike Van Loy:
“It depends. Some companies, especially startups, don’t have an incentive program. A lot of larger companies do. You get a cash payout or something like that. Some startups will give you some extra options if you’re inventing core technologies.
There’s actually a legal standard for it, although it’s fuzzy. Inventors should be someone who had meaningful contribution to some feature that’s included in the claims.
It could be six or eight engineers sitting around a table. Five or six of them are talking, and there’s one person at the whiteboard. Maybe she’s going crazy, and three guys say, ‘Hey, do this, that and the other thing.’ Then someone else is sitting there nodding, or maybe they throw out one idea.
Brainstorming sessions become very fluid. It’s very uncertain who invented what. Typically, if there’s a group that is doing brainstorming, you may just say, ‘Look, you’re all inventors.’
Where you can get into trouble is when you have companies that say, ‘Well, he’s left the company, so he shouldn’t be an inventor.’ I have companies that say this. I say, ‘Well, that’s actually not the legal standard. We don’t like him anymore, or she went to a competitor is not a good reason to say that they’re not an inventor.’
The reason for this is that you may cut them out, file your patent application and get your patent. Five years down the line, your company is doing great. You have this patent. You file suit against someone for infringing. They find this person who left and they say, ‘She said that she contributed to that, and you didn’t list her as an inventor.’
There are two outcomes in that case.
- One, you need to add her as an inventor. In a case like that, if an inventor doesn’t assign their rights, then all inventors are joint several owners of the entire patent. She may be an inventor, and we can go to her and get a license.
- The other outcome is that the patent is straight out invalid because you didn’t name the inventorship right.
The safest thing to do is, if anyone is in that circle, then say that they are probably an inventor. All the inventors sign what is called an inventor declaration. It basically says, ‘I believe that I’m an inventor of the subject matter that’s claimed in this patent.’
You have them under oath saying, ‘I believe I’m an inventor.’ Typically, if your company was set up right, then it has the right employment policies. If you’re in the state of California and they’re a technical person, then they’re basically hired to invent. Their obligation is to assign to the company.
You sometimes end up with these sort of independent contractor situations. I’m not an employee, so maybe I don’t fall under that rule. You’d better make sure that your contractor agreement has something in it about who owns the IP.
Assuming that you have all that, the safest thing to do is name anyone who has some reasonable proximity to that inventive nexus. Make sure they sign a declaration. Get them to sign a formal assignment to the company.
Then five years down the line when you try to have this argument and say, ‘I was an inventor,’ exhibit one during their deposition is the declaration. You ask, ‘What’s this?’ They respond, ‘It’s a declaration.’ Then you ask, ‘Is this your signature?’ They respond, ‘Yes.’ You ask, ‘What does it say?’ They respond, ‘It says I believe that I was an inventor.’ Then you ask, ‘So you’re lying then, or you’re lying now, right?’
A slightly bigger tent is probably safer.”
We hope you enjoyed Mike Van Loy’s insights on this important topic. See the full interview with Mike here.
This is Patrick Henry, CEO of QuestFusion, with The Real Deal…What Matters.