Criteria of Joint Inventor Recognition
A joint inventor should substantially contribute to the any of claims of an invention. As for a composition invention, an inventor shall substantially contribute to the specific structure or the preparing method of the composition. One who merely practices the inventive concept or provide ordinary technical supports or interpret relative techniques shall not be considered as a joint inventor.
Regarding Taiwan Patent I432191 (hereinafter as “patent”), one participant (hereinafter as “appellant”) of the invention files an appeal for being listed as a joint inventor of the patent, due to the fact that the appellant has participated in the invention process of the patent and has been in charge of operations including structure analyzing, experimenting, IUPAC nomenclature naming, and patent applying and invention specification writing. The inventor (hereinafter as “appellee”) disagrees and states that the appellant has not made substantial contribution to the invention based on following facts.
- The appellant fails to prove that the appellant is the only one capable of conducting the composition analysis in the appellee’s company.
- The structure analyzing process is carried out based on known rules and principles to transform or interpret the spectrum statistics into chemical structures which includes no inventiveness, such that the structure analyzing process participation is not considered as substantial contribution to the invention. Also, the structure analyzer conducts the analysis according to the spectrum statistics provided by the appellee; in other words, the analyzer merely follows an analyzing plan designed by other people and does not substantially contribute to the invention.
- The appellee is in charge of entrusting patent agency for patent application. However, the patent applying related tasks are merely administrative tasks which do not include any inventiveness and do not substantially contribute to the technical objective of the invention.
Based on the aforementioned facts, the issue regarding joint inventor recognition has been raised.
According to regulations of Patent Law, an inventor should substantially contribute to the technical features of claims of an invention. When an invention includes multiple claims, the inventor does not necessarily contribute to all the claims. The substantial contribution represents the inventive contribution for the completion of the invention. The substantial contribution focuses on inventive conceptions for resolving the issues of prior arts or for achieving the target effects.
In this case, structure analysis of a composition means to process various spectrum analyses such as NMR or FTIR and thereby acquire spectrum statistics data according to ordinary spectrum interpretation rules and chemical analyzing knowledge. Such process and IUPAC nomenclature naming are professional and difficult tasks; however, whether the tasks being professional and difficult or not are irrelevant to the joint inventor recognition criteria. If the appellant merely participates in the structure analysis and IUPAC nomenclature naming tasks, the substantial contribution including inventive conception made by the appellant to the invention is not sufficiently justified, due to the fact that the structure analyzing process is carried out to confirm the composition structure according to technical measures designed by other people. Also, the tasks of the appellant related to patent application, including specification writing and administrative patent applying task, do not meet the joint inventor recognition criteria. As a result, the appellant shall not be considered as a joint inventor of the invention.
When a person makes substantial contribution to any of the claims of a patent, he/she is allowed to be considered as a joint inventor. To assure the validity of the joint inventor qualification, he/she shall clearly state the cooperation fact between him/her and the inventor of an invention. As for a composition such as the technical objective in this case, the inventive conception relates to the specific chemical structure and the preparing method of the composition. In other words, a person should make substantial contribution regarding the invention of the specific chemical structure of the preparing method thereof in order to be considered as a joint inventor. Also, a technique merely exploiting a completed composition or participation in administrative tasks of a completed composition is not considered to include inventiveness and fails to prove any substantial contribution made to the invention.