added inventor, the infringer may be able
to obtain a license from the newly-added
inventor, thus nullifying the claim of
infringement.
It is precisely in this scenario that
obligating employee inventors to assign
their rights in intellectual property
becomes invaluable. For example, if the
inventor is no longer an employee, they
may benefit little from assigning their
interest in the patent. However, if they
are obligated to do so, they may have a
significant disinterest in doing anything
other than assigning their interests, as
required.
Bad as this scenario may seem,
there may be worse. If, in the course
of litigation involving a patent, it is
discovered an inventor was omitted
evidence to suggest the inventor was
intentionally omitted, it is possible
the patent may be invalidated, thus
dissolving a potentially valuable asset.
Error in Inventorship
the inventorship of the invention.
When the inventor appears willing to
cooperate, both in terms of being added
as an inventor and in assigning their
interest, then adding them is relatively
straightforward and painless. However,
if the inventor is uncooperative in terms
of adding themselves as an inventor,
procedures exist within patent law for
adding them despite their opposition.
Finally, as a measure of last resort,
when the inventor appears likely to do
rely on the patent, certain elements of
the patent may be eliminated so as to
remove that person's contribution to the
invention, thus removing them as an
inventor. This is not always an option
if their contribution cannot be readily
excised, and certainly diminishes the
value of the patent.
These entirely unnecessary risks
can be avoided with careful review
by the inventors, particularly with the
assistance of a patent attorney, of who
should be listed as an inventor, as well as
ensuring employee inventors are under
an obligation to assign their intellectual
property rights as a condition of their
employment.