Before becoming a patent agent, I was a design engineer in several different companies, each having some sort of patent incentive program to compensate inventors.
While no two programs are alike, many companies pay a nominal fee just for submitting an invention disclosure. This might be $100 to $250 or so. In some cases, the companies may pay when a patent application is filed with the Patent Office and/or when the patent issues. This can add another $1000 to $5000 in the inventor’s pocket.
I was at Hewlett Packard when such a new program was announced. I think I submitted 15 invention disclosures in a two week period that resulted in 10 or more issued patents over time.
For those of you who read this and have never been on the inventor’s side of the desk, here are some observations. In some cases, the money being thrown around in these programs drives some very bad behaviors. Money, as everyone knows, is a big motivator for some people, and the chance to grab a few bucks from The Man can lead to an inventor putting their buddy on an invention disclosure when it is not really warranted.
It is not uncommon for one person to have a great idea in a brainstorming session, but everyone in the room suddenly thinks they should be an inventor. As the guy who typically came up with the ideas, this always kind of chaffed me. This phenomenon is exacerbated when there is personal financial gain associated with an invention.
On several occasions, I had submitted an invention disclosure long before telling someone else, only to have that person grumble and complain later on that they were not listed as an inventor. No matter that the paperwork had been rolling through the paper mill for a long time.
The grumbling and complaining may lead to some behaviors that I have seen as a patent agent working with inventors in a corporate setting. Sometimes, you can feel the tension between different inventors at a disclosure meeting, which makes the whole disclosure process more tedious and painful than necessary.
As an agent, I have witnessed some ‘inventors’ who know virtually nothing about the invention, but I often wondered if they should be listed as an inventor. The general rule is that a person should be listed as a co-inventor if they contributed at least one limitation to one claim. In theory, the list of inventors could not be determined until the claims are drafted.
I have tried, with very little success, to send a list of claims to each inventor and have them initial which limitations they conceived. This procedure is generally a disaster, as very few responses come back plus everyone knows the ‘right answer’. The money or prestige riding on the line can cloud people’s judgment.
Navigating these waters is doable. Because I represent the company and have a fiduciary responsibility to the company, I can and should ask the right questions to make sure the patent application has the right inventors listed. With every such client, I probe around to understand the payout system at the company, plus I try to understand the dynamics and relationships between the inventors. By understanding the inventor’s mentality and the things driving their behaviors, I can make sure I get the best product to the client.
