How To Determine The True Inventor

Author:Ms Isabelle Mendelsohn
Profession:Cabinet Regimbeau
 
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Which employer, licensing, IP or R&D department of a

company has never been faced with the difficult task of

designating the inventors when filing a patent

application?

An invention to be exploited is generally the fruit of a

collaboration chain in which each participant has made his/her

own contribution to the final work.

Distinguishing between them comes down to separating the

different participants in this value chain, and is directly

related to human resource management in the corporation.

Basically, according to article L611-6 of

the intellectual property code (IPC), "the right to

the industrial property title belongs to the inventor or

his/her successor in right".

Determining the true inventor/s is therefore an essential

part of ensuring property of the invention. This measure is

essential to ensure that the inventor or any successor in right

will be properly identified as such in the patent application

and, as applicable, can claim his rights within the context of

a collaboration contract. Otherwise, article L.

611-8 IPC allows the true inventor or successor

in right to claim ownership of the patent.

The designation of the inventor is mandatory,

article L611-9 CPI stating in this

respect that "the inventor, an employee or otherwise,

shall be mentioned as such in the patent". Such a

designation, in the case of employed inventors, gives rise to

the obligation to pay an additional remuneration or a fair

price (article L611-7 CPI), which is a potential source

of dispute between employer and employee.

An invention is above all an intellectual conception which

is the fruit of the reflexion of one or several individuals. It

is therefore a question of facts in respect of the role of each

individual in the conception of the invention, and of his/her

intellectual and technical contribution.

This question of facts cannot be pre-defined by law or

contract.

Thus, in France, there is no legal definition of an

"inventor".

Nevertheless, an inventor designated as such in a patent

application is legally presumed to be the true inventor. The

burden of the proof to reverse such a presumption is

particularly heavy, and will be even more difficult when the

presumed inventor has also been designated as such in other

patent applications such as, for example, in the United

States.

It is therefore essential have a "canvas"

available from the start, which will allow decision makers to

distinguish inventors from other participants in developing and

giving value...

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