Inventorship, Ownership, and Collaboration Challenges
By Joshua Goldberg, Co-Managing Partner
Inventorship is often a complex issue in academic environments, particularly given the
collaborative nature of research. A common misconception is equating authorship on
academic publications with inventorship under patent law. These concepts differ
significantly: inventorship is based on contribution to the claimed invention, not
participation in the research generally. The distinction is an important one, however;
only the true inventor(s) are eligible to file a patent application. If the patent application
is filed in the name of an incorrect collection of inventors, any resultant patents might be
invalid and/or unenforceable on their face.
Practitioners must carefully analyze contributions to identify individuals who contributed
to conception of claimed subject matter. This often requires reviewing laboratory
notebooks, publications, emails, and interview notes, as well as potentially conducting
interviews with everyone who contributed to the research to determine their respective
inventive contribution. It is important to be aware, whether for institutional reasons,
cultural conditions, or otherwise, a group of researchers may all take the position they
are unable to remember who contributed what to the overall research and suggest
everyone should be named as an inventor, regardless of the inventorship standard.
Collaborations across institutions introduce additional complexity. Joint research
agreements, differing institutional policies, and varying legal requirements must be
considered. Ownership of resulting IP may depend on funding sources, contractual
arrangements, and institutional policies.
Practical challenges can include coordinating input from multiple contributors, managing
inventors who leave the institution, and ensuring accurate attribution. In some cases,
outside counsel may assist in making objective inventorship determinations.
