How To Determine The True Inventor

Author:Ms Isabelle Mendelsohn
Profession:Cabinet Regimbeau

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"...

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