Jacob (Jesse) Erlich is a partner and a member of Perkins, Smith & Cohen, LLP E-Commerce & Communications, Intellectual Property and Government Relations Groups. He is admitted to practice law in Massachusetts, the District of Columbia and is admitted to the bar of the Supreme Court of the United States. He is a registered patent attorney with the United States Patent & Trademark Office and the Canadian Patent Office.
Email: jacob_erlich@pscboston.com
Website: http://www.pscboston.com/attorneys/erlich_j.html

Jerry Cohen is a partner and chair of Perkins, Smith & Cohen, LLP Science & Technology Group. Mr. Cohen has more than 40 years experience as a lawyer dealing with patent, copyright, trademark, unfair competition, licensing/franchising, visual arts, software, databases and publication law, legal ethics and the administration of justice. He has served as an expert witness, arbitrator and mediator in intellectual property matters.
Email: jerry_cohen@pscboston.com
Website: http://www.pscboston.com/attorneys/cohen_j.html

In a high tech era the focus of business and legal interest has been on content and how to protect it under intellectual property (ip) laws. Too little attention has been given to issues of identity of creators of content. That can be a dangerous oversight. American intellectual property law still looks for a human being as the creator of content and then provides elaborate mechanisms to transfer ownership and even creative credit to business organizations. Foreign laws work for the same goal through different means.

Inventions can be made by sole inventor or joint inventors and U.S. patent applications must be made in the name(s) of the true inventor(s). Determining true inventor(s) is a complex exercise based upon the facts of each case. The act of inventing requires both a conception of a complete and definite idea linked with the first reduction to practice of the thing conceived. This reduction to practice does not necessarily have to be an actual reduction to practice, but can take the form of a constructive reduction to practice through filing of a patent application.

At the time of conception the inventor need not be aware that the idea is new or that it has unexpected properties associated with it. In fact there is no requirement in the law that an inventor be aware of the facts which render the conceived subject matter patentable. It was further recognized by one court in 1930 that invention "is not always the work of genius... and in instances the result of sheer stupidity." Further, an inventor may use the services, ideas, and aid of others in the process of perfecting his invention without losing his rights to a patent. However, the contributions of all alleged inventors must be considered. One way of ascertaining proper inventors for a patent application is to have all candidates point out their contribution to the subject matter of claims of a patent or patent application (or draft), have each point out contributions of the others and then determine if each contribution or totality of a candidate's contributions rises to the level of inventorship. The percentage of contribution is not the deciding factor in determining joint inventorship, but the fact that that contribution, no matter how small, if inventive, is set forth in a claim. U.S. patents can name different inventors or inventor groups for different claims.

Every patent application requires that the inventor(s), by way of oath or declaration, state a belief to be "the original and first inventor or co-inventor of the subject matter which is claimed and for which a patent is sought..."

The concept of joint inventorship is one of the muddiest concepts in the muddy metaphysics of the patent law. Section 116 of the U.S. patent statute states:

When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath.... Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. (underlining added)

Inventorship issues should also be revisited prior to the issuance of a patent in order to determine whether the original inventors should still be named. Therefore, if any claims originally presented in the application have been deleted or changed, it is possible that the contributions of one or more originally named inventors may no longer be part of at least one of the claims in the to be issued patent. In such a case, an inventor(s) may have to be removed from the application. This may occur, for example, when an extensive patent application is divided during patent prosecution into one or more separate applications (generally called divisional applications) covering different inventions which were originally all filed in a single application.

Patents can be challenged for improper naming of inventors. If inventorship of a patent is challenged, it is well recognized that the inventor named in the patent is presumed to be the correct inventor. A challenging party asserting patent invalidity has a heavy burden of proof. Nevertheless patents have been invalidated for over or under inclusion of inventor designations.

If an error in naming an inventor has been made without any deceptive intention, then correction of inventorship can be made. It is required by statute that a patent application be filed in the name of the inventor or inventors. Innocent errors can be corrected, but deliberate and deceptive acts that ignore patent law standards may be uncorrectable. Business people sometimes trade inventor designation for reasons of payment, friendly accommodation or to avoid complications. If an invention was made objectively by A and B jointly but A works for company I and is committed to assign inventions to it and B has no such commitment, it may seem convenient to company I to omit mention of B as a joint inventor and induce A to sign an application naming A as sole inventor. Conversely company I may be in a joint venture with company II who insists that its engineer C be named as a joint inventor with A to establish joint ownership between the two companies. These transactions usually back-fire and are unnecessary as well as illegal. In the joint venture situation companies I and II could have established joint ownership by simple agreement and both could negotiate with B for access to his rights (failing agreement, the companies could write a patent based on A's and C's inventive contributions).

Under foreign intellectual property laws patent applications are usually filed in company names and designation of inventors is voluntary. Some countries require special compensation for employees making inventions used by the employer, but that is implemented internally and amounts to a special merit bonus program. However when the same companies try to extend protection to the U.S. their casual attitudes at home about inventor designation can create complications in the U.S. Some special problems of foreign origin U.S. patent applications include gratuitous designations of laboratory directors and other company executives as co-inventors.

Many kinds of "works" used in business are protected under copyright laws. The subject matter of the works can be software, graphics, broadcast and print content, films/videos, etc. U.S. copyright law starts out with the author or co-authors as owner(s) of the copyright for the work but in a peculiar twist makes certain kinds of work "works-for-hire" with authorship credit as well as ownership vested in a hiring party upon creation. The works for hire include works made by an employee in the course of the employee's duties, with or without a written agreement for work-for-hire treatment. The law also allows valid written agreements for work for hire treatment to be made for limited categories of work including films among several other categories. Recently sound recordings were added to the definition of works eligible for work for hire agreements in a stealth amendment of U.S. copyright law lobbied by music industry interests.

As in the patent law area of sole and joint inventors, the concepts of sole and joint authorship in copyright law are resolved as much by art as science. The basics include identification of copyrightable contributions by each joint authorship claimant and an objectively manifested intent to work together as joint authors. Because copyright protected works lack property-defining markers similar to patent claims, the determination can be much more complicated for joint author determinations than for joint inventor determinations.

Several software ventures using programmers as consultants have found after the fact that there was no implicit work for hire or obligation of the programmer to assign rights to the venture. The venture finds that it has at bet an implied license for limited usage and far less than the ownership rights supposedly bargained for the first time around. So, it may be necessary to bargain and pay for such rights a second time. The investors in the venture are rarely amused by such a turn of events.

Trade secrets belong to the organizations that create them, but mobile employees can move between jobs and take along and re-use skills and experience. Sometimes enforceable covenants not to compete limit that mobility. Drawing a line after the fact between protectable secrets of a company and an employee's portable skills is as complex as joint invention and joint authorship determinations. Advance agreements can ease the burdens and provide certainty for all concerned.

Celebrities have rights of publicity that are the functional equivalent of copyright and trademark rights. But agreements can give the benefit of such publicity rights to others. Ordinary people, including customers and employees, have privacy rights analogous to trade secret rights that are sometimes waived by on-line subscription contracts. The European Union (EU) has acted to limit the right of on-line services to invade privacy. The U.S. is trying to establish voluntary models of privacy protection but may have to mimic the EU model for effectiveness and for the sake of maximizing EU and U.S. trade relations.

The laws of all the U.S. states and foreign countries include settled doctrines of fiduciary duty to act for the benefit of companies and not to appropriate opportunities belonging to the company. These fiduciary duties can require officers, directors and some key employees, professional consultants, partners and major investors to assign or license patents and copyrights to the company, to safeguard confidential information and to disgorge profits of misappropriation. Those laws also include doctrines of 'estoppel' (don't say one thing about property today and another thing tomorrow). This has been employed recently in U.S. patent cases from preventing former-employee inventors from challenging validity of patents for inventions they assigned to their former employers.

U.S. copyright law provides a reversion right for authors - a right exercisable by the author or heirs 35 - 40 years from creation of a work to revoke all prior assignments or license grants excepting for a few grand-fathered rights and make a new bargain with a now-more-highly-valued work. But it doesn't apply to works for hire. Thus, the importance of a work for hire bargain at the outset rather than just an assignment of rights is quickly recognized.

Apart from the strict standards of copyright law, there is a 'moral right' of an author, recognized to a limited degree under U.S. law and more so under laws of several other countries. The right is one that can involve avoidance of censorship or mutilation of creative works, authorship credit and conversely a right to disclaim credit and in some instances a right to participate in re-sales of art at appreciated prices.

We are at the early stage of an era of high powered computers, neural networks and other learning and logic applying machines (including genomic, molecular and protein codes of life itself in the plant and animal kingdoms) that have imitated and will imitate, and indeed improve on, the creative activities of human inventors and authors. Nevertheless, human proprietors, creators, trainers and supervisors of the machines will find ways to span the machines' creative work products to connect human effort to intellectual property rights adapting present legal constructs. Silicon folks have been and always will always be the servants of carbon folks ... at least for the next few years. Over a longer range of time we may need some new legal constructs (including a redefinition of 'we'). Life codes are even more problematic.

Cub reporters learn early on to ask and answer questions of who, what, when, where and why as to any news story. It's also a good practice for dealing effectively with intellectual property. The first question of "who" deserves special attention. If that one is answered first it will be easier to deal with all the others. But it may be necessary to answer all the questions repeatedly in several rounds to get the best set of answers. And each event of creation, protection or invasion of an item of intellectual property is a separate such news story. There's a lot of work ahead and we may welcome help from new silicon and DNA colleagues in doing it.

The information is provided for informational purposes only, and should not be construed as legal advice.