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Inventorship

 

 

Inventorship is an important legal principle often invoked when applying for patents and enforcing patent rights. The first individual or group to make an invention that is new, useful, and non-obvious is termed an inventor, and under U.S. patent law only inventors are permitted to receive a patent on an invention.

Inventorship in the context of patents is not the same as authorship in the context of peer-reviewed articles in scientific journals. Inventors as defined by patent law are those who contribute to the conception of the discovery. An inventor is strictly someone who made identifiable contributions to the patentable elements of an invention. Thus, even someone who actively participated in the research project still might not be a co-inventor for patent purposes. Those who conduct experiments or provide funding or tools for the study might be authors, but they are not inventors. To put it another way, inventorship is legal. Authorship is collegial. If a person listed as an inventor is not truly an inventor, or if an inventor is left off the patent application, the patent could be ruled invalid.

Inventorship can come from more than one institution. Each institution may have its own set of rules and regulations involving intellectual property. The MCW Office of Technology Development will execute an Inter-Institutional Agreement with the other institution to bring all the inventors and rights together to make licensing the invention possible.

For a more comprehensive discussion of inventorship, please see the USPTO web site.

Role of the Inventor

The inventor plays a critical role in the Office of Technology Development's (OTD) decision making process. Each year, OTD receives more than 50 invention disclosures or approximately one per week. Important information that inventors might provide include:

  • Key benefits and commercial advantages: Some new discoveries result in products that displace products already on the market. In order to gain market share, the new product must provide some significant advantage to either the manufacturer or the end-user. Improved performance, cost savings, time-saving, and multi-functionality are all significant benefits that could encourage consumers to switch.
  • Target companies: Inventors are OTD's greatest resource for locating potential licensees because they are experts in the field of the invention. The office can always benefit from a list of companies (and, if possible, contacts) that may be interested in a license. Please note, however, that inventors should not disclose their technology to a company prior to either filing a patent application or signing a confidentiality agreement. Disclosing an invention could jeopardize OTD's ability to obtain patent protection.

Inventors can also assist the office by:

  • being responsive to OTD and patent counsel requests. When investors invest their own time along side OTD, the rewards will be greater.
  • keeping OTD informed about publications or interactions with companies pertaining to the invention.
  • continuing to follow global scientific developments in the field during the licensing process. If an inventor sees a new publication or notices a new technology at a conference exhibit that might be infringing on the inventor's patent, please inform the OTD staff.

Laboratory Notebooks

Accurate and detailed record keeping is vital to determining inventorship and related patent rights. Since scientists use notebooks to document concepts and related experiments, the patent examiners and the courts often rely on the notebooks to determine who first made the invention and when. Thus, a properly kept laboratory notebook can be invaluable in the patent process.

Laboratory notebooks and procedure manuals used to document inventive activity should have at least four attributes: 1) The pages of the notebook should be permanently bound together and consecutively numbered, 2) entries in the notebook should be legibly recorded in ink without large white spaces between text, 3) the pages should be signed and dated by the person or persons performing the work and by at least one witness, and 4) enough detail should be included so that someone else with similar skill and knowledge to the inventor (i.e. "one skilled in the art") could repeat the work. Each of these attributes may play a part in proving the accuracy or authenticity of the invention.

Protecting the Invention as “Real Property”

Real property is tangible property that can be given or sold to others. At MCW, research tools are an example. New compounds and formulations, biological research materials such as cell lines, genetic constructs, hybridomas and their antibodies, data sets, and computer software and applications are developed during the normal course of our research programs. When MCW faculty want to share these tools with their colleagues at non-profit institutions for research purposes, the materials should be transferred under a Material Transfer Agreement (MTA).

MTAs are binding legal agreements between the provider of research material and the recipient. The agreement protects the discoverer and the tool by setting forth the conditions of transfer and use, protecting proprietary interest, and restricting distribution. MTAs also require the recipient to indemnify the provider from any liability arising from the use of the material. In consultation with the inventor, the Office of Technology Development (OTD) can charge the recipient institution for the tool a premium for the service. Thus, like patent license agreements, MTAs offer inventors an opportunity to cover the costs of preparing the tool and shipping, and to receive financial reward for their endeavors.


 

Contact Us


MACC Fund Research Center (MFRC) 3056
8701 Watertown Plank Rd
Milwaukee, WI  53226
Phone:  (414) 955-4362
Fax:  (414) 955-6619

Directions to OTD

Directions to MCW

Joseph Hill, PhD
Vice President
Office of Technology Development
414-955-4381
jhill@mcw.edu

Kalpa Vithalani, PhD
Licensing Manager
Office of Technology Development
414-955-4884
kvithalani@mcw.edu

James Antczak, PhD
Licensing Manager
Office of Technology Development
414-955-4894
jantczak@mcw.edu