IP Essentials: Q&A Series

Q How do I ensure that my company retains ownership of an invention? A In order to obtain the ownership of an invention, a company should have some form of written agreement, typically a employment agreement, contract and/or assignment, that makes clear that the intellectual property created is the property of the company. In some circumstances, local law can ensure an obligation to assign the intellectual property rights to a company, but this obligation may not be enforceable worldwide. Q Is “authorship” the same as “inventorship”? A No. Unlike in academia, where it is common for all members of a team to be named as an author, inventorship (or joint inventorship) may not be granted simply as a reward for contribution to a project. Inventors must make an intellectual contribution, solely or jointly, to at least one element of a claim in the patent. In contrast, authors may have contributions that were done solely at the direction of others or made to the reported research, rather than contributions to the conception. Q What happens to my patent if I omit or misidentify one of the inventors in the patent application? A Patents, by law, must contain the names of all inventors, and all inventors named in the patent must have contributed to the conception of the invention. A patent that incorrectly identifies an inventor or inventors is rendered invalid, unless corrected. A mistake can be fixed if it was made through error and without intent to deceive.

Q For inventions that are developed utilizing an AI system, who, if anyone, is the inventor? A The answer to this question is complex. For example, where a person conceives of an inventive solution to a problem and then instructs an AI system to optimize certain features of the inventive solution, the answer is clearer. The performance of routine optimization by the AI system will not call into question whether the AI system is an inventor. However, if a person presents a problem to be solved by an AI system, and the system develops an otherwise inventive solution that the person had not conceived of the answer may not be straightforward. The person did not conceive of the solution, so in accordance with current patent laws, the person is not the inventor, even if the person programmed the algorithm that the AI system utilized to arrive at the solution. According to U.S. patent law, if the person did not conceive of the particular solution arrived at by the AI system, he/she is not the inventor. The question of who may properly be named as the inventor of an otherwise inventive solution developed by an AI system is not just for academics, since in order to apply for a patent on an invention, one must list the inventor(s).

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