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Subtle Effects of New Patent Rules – Changes to Inventor Recognition Programs

The patent rules from 2007 will cause many ripple effects throughout the practice of patent law. One thing that should be considered is how inventor recognition programs play into these rules.

Background

As part of the new rules, an applicant must disclose to the Patent Office any group of patent applications that are filed within a two month window where the applications are commonly owned and at least one inventor is in common. Every time an inventor is listed on two patent applications, a trigger causes the inventor’s employer to file a bunch of declarations against interest.

One of the best ways to eliminate this burden is to eliminate filing two or more patent applications with common inventors within the two month period.

The Patent Office discourages applicants from spacing out their applications to avoid this rule, as it can be seen as inequitable conduct.

However, there is a tendency to add people to a list of inventors in many corporations. In my own experience as an inventor, I have seen managers add inventors to a patent application because they viewed patents as more of a recognition and reward system than as a legal document with specific legal requirements.

The mechanism by which inventors are recognized and rewarded within a company may play into who is listed as an inventor. In many companies, in an effort to include as many inventors as possible, the companies may pay each inventor a reward regardless of the number of inventors. Quite frankly, this leads to having many patent applications that include long lists of inventors.

These long lists of inventors play havoc with overlapping applications under the new rules.

Recommended System

I recommend reviewing patent recognition systems so that the systems properly reward the true inventors but eliminate those inventors who may be questionable.

In the reward system where a fixed amount of money is paid to each inventor, there is a tendency to include questionable or marginal inventors.

In a reward system where a fixed amount of money is divided between all the inventors, there is a tendency to exclude questionable or marginal inventors.

My recommended reward system may set a fixed amount of money, say $2000 or $5000 for the total reward. The money would be divided amongst the inventors based on their participation. The person who writes the invention disclosure should receive a count, each participant in a disclosure meeting with the patent attorney should receive a count, each substantive reviewer should receive a count, and each inventor who signs the application should receive a count. The money will be divided up between inventors based on their counts.

In this system, a person who writes the disclosure, attends the meeting, and reviews the application may receive 4 counts when they sign the application. Another inventor may participate in the meeting and sign the application for 2 counts. A third may only sign the application and receive 1 count.

The total number of counts is 7, so the first inventor would receive 4/7 of the total money, the second 2/7, and the third 1/7.

Such a system encourages each person to actively participate in all phases of the patent preparation process, which usually takes up valuable work time.

Some tweaks may include giving the disclosure writer 2 or more counts for writing the disclosure, since inventors tend to be notoriously slow to write a good description of their idea.

The other subtle feature of this system is that inventors will have a vested interest in limiting the number of inventors, and invention disclosures will tend to have one or two inventors listed, rather than twelve or more.