One Huge Mistake That Could Invalidate Your Patent

After your company has made a significant investment of time and money in obtaining a patent, the last thing you want to happen is for your patent to be invalidated because of a mistake that could have been avoided. In this article we will describe the importance of listing the right people as inventors on every patent application in order to avoid this devastating consequence.

Unfortunately, in my experience in software patent law, I have found that all too often our clients tell me that their previous patent law firms did not educate them about how to pick the right people to be listed as inventors on their patent applications, or failed to tell them that listing the wrong inventors can kill their patents.

Furthermore, even in our law firm, we’ve found that many clients mistakenly assume that practices that are accepted in universities for listing authors on research papers or in corporations for listing people on conference presentations also apply to listing inventors on patents. Nothing could be further from the truth. For example, although it is common practice to list the director of a university research lab as a co-author of every paper published by that lab, whether or not the director actually participated in the research, doing the same in a patent can be deadly.

The legal definition of an “inventor” on a patent is very specific and may be very different from what you are used to within your own organization. When filing a patent application we must adhere strictly to the legal definition of “inventor” when listing the inventors on that patent application. If we fail to do so, your patent can later be “invalidated” in court, meaning that the patent is no longer enforceable and is treated as if it had never been granted. This can happen many years later, even after your patent has been granted by the Patent Office.

Failing to list the right inventors can take two forms:

  1. Including someone as an inventor on a patent who is not really an inventor, such as the research lab director above.
  2. Failing to list someone as an inventor who satisfies the legal definition of inventor.

Either of these errors is equally deadly to a patent. And it is easy to trip up in either situation. You may face pressure within your organization to name someone as an inventor on a patent because that person has high status within the organization. Conversely, you may be inclined not to list someone as an inventor because that person is in a junior position or because the person is a contractor rather than an employee. None of these “reasons” justifies playing fast and loose with the list of inventors, because any failure to comply strictly with the legal definition of “inventor” is equally likely to kill your patent.

And if you’re wondering how anyone would ever find out that you have listed the wrong inventors on a patent, the answer is that if you ever sue a competitor for infringing your patent, that competitor will use every legal weapon at their disposal to invalidate your patent. That will mean obtaining your corporate records and interviewing (“deposing”) everyone possible within your company in a legal process known as “discovery.” A skilled attorney can cross-examine your CEO and easily reveal that he or she did not really invent what your patent covers. Similarly, if you left a disgruntled former employee off the list of inventors, that person will be all too glad to testify that he or she should have been listed as an inventor on a patent but was left off the list.

And yet all of these catastrophic results can be avoided with some careful planning. It’s the exact reason that I put out this free content with guidance on the patent process to ensure that the correct inventors are listed on every patent.

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