Patent Inventorship: Not Always So Patently Clear

The South African Patents Act No. 57 of 1978 ("the Act") does not define "inventor" per se, although it is generally understood to refer to a natural person who conceives of something novel in the context of patentability criteria. Unless otherwise provided or agreed, the inventor is the first entitled to file a patent application to have his/her invention protected. Where an inventor is employed to research/invent on behalf of an employer, such inventor has a right to be cited on a patent application as an inventor, whilst the invention is generally assigned to the employer by way of a general assignment in the employment contract, or by a specific assignment for the patent application in question, with the employer being the rightful owner/assignee of the patent application.

Patent applications may be filed in the names of multiple joint or co-inventors. All cited inventors must have contributed to the invention, although not necessarily in equal parts. South African courts have not had to deal with the question of what such a contribution entails, but it is generally considered that each contribution must consist of an inventive step which is not merely imparting knowledge which is known in the art.

A test for identifying an inventor was formulated in the Canadian case of University of Southampton's Applications [2006] RPC 31 (CA), as follows: Firstly, one must identify the inventive concept in the patent or patent application and, secondly, determine who was responsible for the inventive concept. A person is not an inventor simply because he or she contributed to the invention, for instance by being involved in a research project, or performing experiments pertaining to the invention under the supervision of a research leader. It is important to distinguish between claims containing an inventive contribution and those merely supporting the inventive claim, since contributions towards the latter does not always give rise to patent inventorship.

In the United States case of Hess V Advanced Cardiovascular Systems Inc., 106 F.3d 976, 979-980 (Fed. Cir. 1997) it was confirmed that a person cannot be an inventor if the contribution is not novel or inventive. In this case, a plastics engineer sought to be added as an inventor to a patent for a new heart catheter. The engineer was tasked with identifying suitable materials for use in the new heart catheter which was conceptualised by heart surgeons. The engineer explained the properties of...