Identifying ‘the invention’ in Inventorship Disputes

Abstract

This article focuses specifically on ascertainment of in inventorship disputes which arise from joint innovative engagements. Joint inventorship gives rise to several questions including: what consists of; quantum of collaboration supplied by parties; what significant contributions have been made by respective parties; and whether there has been joint conception. This paper is concerned only with definition and identification of the invention in patent entitlement disputes. It argues that sum of inventive concepts disclosed in specification, rather than claims, should be touchstone for determining of what constitutes in such contexts. This article submits that technical details contained in specification should be preferred to claims when one is considering inventorship in such cases because: a) disclosure contained in specification predates claims; b) claims derive their existence from specification’s disclosure; c) specification provides technical background through which claims could be understood in circumstances of ambiguity; d) specification serves as a measure of proportionality between a protection sought and technical contribution furnished; and e) specification avoids inequitable assertions of entitlement in inventorship disputes.