Who is the Inventor? | Don’t leave it to chance
Patent rights originate with the inventor(s) and remain the property of the inventor(s) unless ownership is transferred to another party by agreement or on statutory grounds. Accordingly, it is critical when filing a patent application that the true and correct inventor(s) be named in the application as otherwise the applicant(s) claim to ownership of the invention, and rights associated therewith such as the right to license or sell the invention or initiate proceedings for infringement, may be called into question.
Who is the Inventor?
In some instances, the question as to who the inventor is may be a simple one. Perhaps there was one inventor who conceived of the invention and reduced it to practice, such as by building a prototype, all by themselves.
In other cases, inventorship can be more complex. There may be numerous individuals involved in the conception of the invention and its reduction to practice and the quality of the contributions of the individuals may differ. Some individuals might have had a greater involvement in the conception of the invention and others might only have been involved in reducing the invention to practice such as by producing and testing prototypes.
When considering if an individual ought to be named as an inventor in a patent application greater emphasis should be placed on the quality (i.e. inventiveness) of their contribution rather than the quantity.
The decision of the NSW Supreme Court in Con Kafataris & Ors v Cory Davis & Ors  NSWSC 1454 considered a dispute over inventorship in respect of an International (PCT) Patent Application. The decision provides useful guidance for assessing whether a person ought to be named as an inventor in a patent application. The decision also provides a reminder that a non-disclosure agreement, preferably written, should be reached in advance of handing over confidential information.
The Background to the Dispute
One of the defendants, Mr Thomas, conceived of an invention involving a supplementary or additional betting option for the game of Baccarat and was named the sole inventor in a provisional patent application filed on 3 April 2012.
Following the filing of the provisional application the plaintiff, Mr Kafataris, was approached by the defendants as they required assistance with the mathematics of the game as well as other assistance in commercialising the invention. The plaintiff agreed to work with the defendants and outlined an ownership proposal whereby the plaintiff would hold a controlling interest in the venture and in return would provide investment and would open doors for the potential licensing of the invention.
The plaintiff asserted that leading up to the deadline to file the PCT Application claiming priority from the provisional application he provided material to the defendants such as spreadsheets with examples of odds relating to the game of Baccarat. The plaintiff also asserted that he had developed a betting opportunity that was specific to Blackjack which was included in the PCT Application. However, the plaintiff was not named as an inventor or an applicant in respect of the PCT Application and negotiations between the parties did not result in a commercial agreement being finalised.
The plaintiff sought a ruling that he had made a material contribution to the invention in the development of the Blackjack betting opportunity and, as such, he ought to have been named as an inventor and an applicant in the PCT Application. The plaintiff also argued that the inclusion of information in the PCT Application relating to the Blackjack betting opportunity, without naming the plaintiff as an inventor or an applicant, was a breach of confidentiality. The defendants argued that the application of the invention to Blackjack was already covered in the terms of the provisional patent application or was merely an obvious application of the invention and hence not a material contribution to the invention.
Authorities Considered by the Court
The Court stated that whether a person should be regarded as an inventor requires careful analysis of what the person has done in relation to the invention and whether that can be described as qualitative or quantitative. On the one hand, the Court cited authority to suggest that the question of inventorship may flow, at least to some extent, from an assessment of the inventiveness of the contribution made by putative inventor. The decision of University Western Australia v Gray provides that an inventor must have made a material contribution to an invention to be correctly named as an inventor. The reduction to practice of an inventive concept may or may not require an invention or inventive step. If it does not require an inventive step then reduction to practice does not demonstrate inventorship.
On the other hand, the Court cited authority to suggest that the question of inventorship does not flow from an assessment of the inventiveness or respective contributions but from an objective assessment of the contribution to the invention itself. In that instance, a consequence of collaboration between parties is that entitlement to any inventions associated with that collaboration are shared between the parties.
The court found that the plaintiff’s contribution, namely the identification of a supplementary betting option within the game of Blackjack, was not a material contribution to the invention over and above the defendant’s invention relating to a supplementary betting option within the game of Baccarat. The Court found that there was no doubt that the plaintiff invested substantial effort in determining whether the invention, namely supplementary betting, could be applicable to Blackjack. Nevertheless, the Court found that this effort did not involve an inventive step, did not involve a material contribution and did not bring something new or different to the invention. The plaintiff’s effort did not bring about a change to the invention but merely provided another example or embodiment of the invention. As such, the Court found that it was not appropriate to consider the plaintiff as an inventor.
In relation to the allegation of misuse of confidential information the plaintiff relied on the authority in Del Casale & Ors v Artedomus (Aust) Pty Ltd  NSWCA 172 which set out that the existence of an obligation of confidence requires: that the information must have the necessary quality of confidence about it; that it must have been imparted in circumstances importing an obligation of confidence; and there must have been an unauthorised use of that information to the detriment of the party that provided it.
The plaintiff had argued that the defendants were obliged not to disclose or use the confidential information other than for the joint benefit of the parties and/or unless the plaintiff was named in the PCT application as an inventor or an applicant. The plaintiff argued that this obligation was said to have been breached by the inclusion of the confidential information in the PCT application and by the failure to name the plaintiff as an inventor and/or applicant.
The Court found that the information alleged to be confidential by the plaintiff was, in large part, publicly available and, as such, would not be the kind of information that would require protection by equity. Furthermore, the court determined that the information was imparted in circumstances that did not import an obligation of confidence. There was never any request by the plaintiff to keep such information confidential nor any attempt to impose a non-disclosure agreement or other means of protecting the confidential information. There was no evidence whatsoever that the plaintiff had ever indicated, expressly or impliedly, that the information provided to the defendants should be regarded as confidential. Furthermore, the inclusion of the information in the PCT application was consented to by the plaintiff and, as such, supports a conclusion that obligations of confidentiality were not imposed upon the defendants in consideration of the handing over of that information.
Accordingly, when assessing if an individual ought to be named as an inventor in a patent application greater emphasis should be placed on the quality (i.e. inventiveness) of their contribution rather than the quantity. If the contribution of the person relates to an example or an embodiment of the invention that does not materially alter the invention itself then such a contribution is unlikely to be a material contribution to the invention that would justify their naming as an inventor. Furthermore, courts are unlikely to entertain broad claims regarding misuse of confidential information where there is no evidence of any express or implied confidentiality undertakings. Non-disclosure agreements should be obtained at an early stage before any valuable information is handed over.