Identifying ‘the invention’ in Inventorship Disputes

 

Volume 11, Issue 1, April 2014

 

Moshood Agbolade Abdussalam *

Cite as: M Abdussalam, “Identifying ‘the invention’ in Inventorship Disputes”, (2014) 11:1 SCRIPTed 38 http://script-ed.org/?p=1413

 

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DOI: 10.2966/scrip.110114.38

 © Moshood Agbolade Abdussalam 2014. This work is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License. Please click on the link to read the terms and conditions.

Introduction

This article hinges on the issue of entitlement to patents through inventorship under UK patent law and also seeks to incorporate a comparative analysis of American law on the same subject. It seeks to discuss the equitable standard for determining what the “invention” is in inventorship disputes. In the UK (and other conventional patent regimes) it is the devising of an invention through innovative processes or means that gives rise to a patent claim.[1] It is pertinent, therefore, to note that although there might be other means – such as by law and equity – through which entitlement to patents may be secured, the primary source of obtaining a patent is through an inventorship claim.[2] As a result it is necessary to have proper measures for ascertaining who true inventors are.[3]

Given the complexities of modern technologies and the corresponding high degrees of specialisation in science and technology fields collaborative engagements have become the norm in the inventive processes.[4] Accordingly, the question of “who supplied the inventive concept behind the invention?” now arises with greater frequency.[5] This is not merely an academic consideration: the strong connection between inventorship and ownership means that this issue could affect the exploitation of a patent.

Where there has been joint efforts towards an inventive end and a dispute arises thereafter in relation to inventorship, three questions will usually arise: a) What is the invention?; b) Who contributed to the invention?; and c) Was there joint conception?[6] As noted, this article focuses specifically on the first of these: the identification of “an invention” as the subject-matter of inventorship disputes.

As collaboration increases ascertaining inventorship – or in other words determining the source of an invention, is by no means a simple matter – and in fact this area has seen a surge in litigious attention. In the American case of Mueller Brass co. v Reading Industries Inc.[7] the court lamented the intricacies of ascertaining inventorship in joint collaborations, describing it as “one of the muddiest concepts in the muddy metaphysics of the patent law”. In the UK case of IDA Ltd and others v University of Southampton and others[8] Lord Justice Jacob acknowledged the upsurge in inventorship litigation, saying:

Finally, we were told that in very recent years there has been (and are) a rash of entitlement cases before the Comptroller. No-one really knew why this jurisdiction (which in my time at the Bar was moribund) has recently come alive. There was some speculation about an increase in joint ventures, or an increase in the appreciation of the significance of patents. None of them really explain it…[9]

 

            What is meant by “invention” for the purposes of inventorship is not settled in the UK. The meaning of this concept is still a matter of competition between the inventive concept of the claims and specification.[10]  An understanding of the functional differences between the claims and the specification is beneficial in highlighting this competition between the claims and specification.[11] The provisions of s 14 of the UK Patent Act describe the functions of the specification and claims. Section 14(3) describes the specification as that which shall ‘disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art’. Section 14(5) describes the claim(s) as defining the matter for which protection is sought, in clear and concise language, supported by the specification and relating to an invention or to a group of inventions which are so linked as to form a single inventive concept. The essence of discussing the relationship between the specification and claims is simply to show the functional differences between both, with the ultimate intent of pointing out which of the two should be considered the ‘invention’ in entitlement contexts.

This article argues that the statutory vacillation of the term ‘invention’ between the claims and specification need not create difficulties if that competition were given a context-specific settlement.  Such a context-based approach, as argued in this article, should be settled in favour of the specification due to nature of the relationship between the specification and claims. More specifically, the collection of embodiments disclosed in the specification both preludes and forms the origin of the claims.[12] Additionally, the specification provides the yardstick for measuring the extent of protection deserved by the claims. It also serves as a source of claim interpretation and it bears a greater likelihood of stability across the patent lifecycle than claims.

Beyond these functional differences, there are also ‘efficiency’[13] reasons for the choice of specification over the claims. Such an approach would aid both the avoidance of fragmented ownership interests in a granted patent and with the prevention of a specious assumption of an inventor’s status. While judging inventorship through the periscope of the specification would lead to a result of either common/joint ownership or nothing the alternative, judging by the claims, is more likely to create a situation of fragmented ownership instead. This is because in light of the fact that the UK Patent Act 1977 does not have provisions enabling joint ownership of a patent in circumstances where a party has contributed to only a claim. Therefore a claim-by-claim approach could place ownership along the lines of disparately owned claims, thus creating room for a morass of complex ownership situations. For example, a patent may be solely owned by A, but a claim in that patent may be jointly owned by A and B; or a patent might be jointly awarded to A and B, but rights to exploit that patent could be divided between A and B on the basis of the claims differently attributably them. This however is in contrast to the US position. This is because the provisions of s 116 of the US Patent Act allow a party who has significantly contributed to even just one claim to count as an inventor. Finally, an approach adjudging inventorship from the standpoint of the specification would also forestall issues of spurious inventorship, something which the claim-by-claims approach is susceptible to.

1.      Relationship between inventorship and ownership in UK Patent law

 

It is arguably natural that the deviser of an inventive concept should be the owner of the patents granted on such an invention.[14] Indeed, that deviser[15] is the object of the patent system’s reward philosophy.[16] Chandra corroborates this position, noting that:

Bodily or mental powers require an implementation to act through and a material to act upon in order to create something. The thing that is created becomes the property of the person who has mixed his labour, powers or talents with it. Thinking about property, therefore, has been informed by considerations of the origin of the material. The creator was seen to be the legitimate holder of that property. Right-holding is thus linked to ownership, with a proprietary control over the domain specified as the object of the right.[17]

 

This postulation is supported by s 7(2)(a) of the UK Patent Act 1977, the interpretation of which was considered in Rhone Poulenc Rorer v Yeda Ltd[18]. In this case the UK House of Lords, overruled Markem v Zipher[19], a decision of the Court of Appeal where Jacob LJ had previously held that inventorship itself could not be the basis for a claim to entitlement. In the House of Lords, Lord Hoffmann expounded on the interpretation of s 7(2)(a) and stated that:

 

In saying that the patent may be granted primarily to the inventor, section 7(2) emphasises that a patent may be granted only to the inventor or someone claiming through him. The claim through an inventor may be made under one of the rules mentioned in paragraph (b), by which someone may be entitled to patent an invention which has been made by someone else (the right of an employer under section 39 is the most obvious example) or the claim may be made under paragraph (c) as successor in title to an inventor or to someone entitled under paragraph (b)

 

 …[T]he first step in any dispute over entitlement must be to decide who was the inventor or inventors of the claimed invention. Only when that question has been decided can one consider whether someone else may be entitled under paragraphs (b) or (c).[20]

 

In essence, Lord Hoffmann interpreted s 7(2) as meaning that the inventor is the primary grantee of the patent, being the chief object of the patent system. However, other persons may be entitled for legal reasons – such as by virtue of contract, employment obligations, succession or equity – to dispossess the inventor of that entitlement or to derive it from the inventor. Similarly, Seymour holds that the question of inventorship takes primary position in entitlement contests as he argues that the interests which any person might hold over a patent are only derived by reason of a connection with the original inventor.[21]

 

 

2.      Subject-matter of inventorship disputes  

When a court is seized with an inventorship dispute, the primary concern of the court is to ascertain who the inventor is. As stated in the Australian case of Row Weeder Pty Ltd v Nielsen,[22] any determination of a question predicated on inventorship can only be rightly disposed of by ascertaining what person(s) have supplied contributions that have had material effect on the final conception of the invention in issue. Thus in the UK case of University of Southampton Application[23] Laddie J ruled that a question bordering on inventorship involves: (a) identifying the inventive concept(s) underlying the invention; and (b) identifying who came up with the inventive step(s) contained in the invention.[24]

It is the first of these questions that is the central focus of this paper: What exactly is the invention? It should be borne in mind that in order to determine what the invention is the inventive concepts underlying the invention should first be ascertained. The question of what the invention is spurs much debate, with some arguing that the invention is the sum of inventive concepts contained in the specification[25], while others holding that it is the patent claims that constitute the invention.[26] Janicke avers that the meaning of the ‘term’ invention is protean and flexible, depending upon the legal considerations at hand.[27] The varying meaning of ‘invention’ in the UK is recognised at s 125(1) of the 1977 Act, which states that:

…. (A)n invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly [emphasis added]

 

This reflects the fact that the meaning of ‘invention’ will depend on the context at hand. Contexts for this purpose could range from infringement, validity, entitlement, to actual conception.[28] Thus, for example, when in general patent law parlance we talk of the infringement of an invention our minds jump immediately to the patent claims, as it is these claims that earmark the patentee’s monopoly.[29] Also, it is through patent claims that we determine the validity of patents in terms of novelty, inventiveness, sufficiency/enablement and industrial applicability.[30]

For example, on the question of inventive step in Conor v Angiotech[31] Lord Hoffmann said that: “the invention is the product specified in a claim, and the patentee is entitled to have the question of obviousness determined by reference to his claim and not to some vague paraphrase based upon the extent of his disclosure in the description”.[32] However, when it comes to issues bordering on the conception of an idea which forms the basis of a patent application it is submitted by Vivien Irish that, the disclosure document or specification is what should be considered.[33] This is because the specification provides an insight into the background of the invention. But what is unclear is what ‘invention’ means in entitlement circumstances? This is the question which this article attempts to grapple with, and it will be suggested – in line with the view of Vivien Irish – that the specification should be the subject for consideration in this context.

 

3.1       Shifting meaning of ‘Invention’ in inventorship disputes in the UK

 

As can be deduced from Lord Hoffmann’s quotation above, taken from his judgment in Rhone Poulenc Rorer, any determination of the ‘invention’ in entitlement contexts also affects the proprietary rights in a patent.[34] If the invention is determined upon the basis of the patent claim then only those persons who have made a technical contribution to its conception are inventors. Accordingly this means that where there is a multitude of claims and varying entities partook in conceiving each claim, inventorship and thus entitlement, will be determined on the basis of each claim and contributions thereto. This will inevitably result in fragmented ownership of the patent.

Where however the patent specification or disclosure is the starting point for determining inventorship, material contribution to the conception of the general technical idea contained in the specification is sufficient to earn the status of sole inventor or of co-inventor, and put one at the threshold of entitlement. This hinges on the principle that qualifying as an inventor requires one to have materially influenced the conception of the inventive concept.[35]

As pointed out by Lord Justice Jacob,[36] litigation founded on inventorship disputes is only a relatively recent occurrence in the UK patent system.  The body of case law on this aspect of patent law is, therefore, somewhat new and evolving. Notwithstanding this, there have been some relevant decisions which have touched on inventorship, and in particular upon the question of what an invention is in the context of entitlement. There are two cases in particular that are at the forefront in the evolution of this aspect of law [37]: Viziball Ltd’s Application[38] and Norris Patent Application.[39] Tibor is of the view that the approaches used in these cases are same,[40] but it is argued here that they are in fact different.

 

The first of these cases, Viziball Ltd’s Application, involved two erstwhile friends Godin and Christie. Godin had furnished the technical idea of ‘flexible retro-reflectors’ while Christie has supplied the idea of ‘recesses’. These concepts where applied to fast moving balls or projectiles to improve their visibility on television or video recording. In their approach to the dispute the courts considered the invention(s) to be that set out in the patent claims, and therefore that inventorship could only be based on contributing to the conception of claims. The court (just as the Hearing Officer had at the Patent Office had done) set out first to identify the inventive concepts[41]  lying at the heart of the specification and, upon determining this, went on to consider each claim in turn seeking to find what party’s inventive concept had been material to the conception of that particular claim. It was upon this basis that inventorship was attributed between the litigants. The court held that claims which bore both technical contributions were to be jointly owned, but claims which were founded on the distinct technical contributions were to be singularly owned by its devisor. This is the claim-by-claim approach.[42]

 

In Norris’s Patent, however, the Court took a different approach from Viziball. In this case, the patent in issue related to a device for the automatic determination of the refractive index of a sample fluid. Two cardinal technical aspects (i.e the optical and control aspects) were encompassed in the overall inventive concept disclosed in the specification. It was found that N had solely conceived the optical aspect, while G had made the control aspect in collaboration with N. The court (affirming the decision of the Hearing Officer) took the view that patent rights arise not just from granted applications but also ‘yet-to-be-granted’ applications too. Therefore the patent specification or disclosure ought to be the starting point of inventorship in entitlement contests, not the claims. The court thus looked into the specification’s technical contents to determine joint inventorship. Although it was acknowledged that the control aspect of the invention was the only contribution which G had partaken in, the court found both G and N to be the co-inventors of the patent as a whole. The court embraced the position that the specification be considered in its entirety, rather than apportioning entitlement on the claim-by-claim basis.[43]

 

Further cases have continued to grapple with these divergent approaches. In Henry Bros v Ministry of Defence[44]  the Court of Appeal agreed with the High Court that the ‘invention’ for entitlement purposes was the core inventive concept disclosed in the specification,  refusing to consider each claim as an invention; a position identical to that adopted in Norris. In Minnesota Mining Manufacturing and Co’s International Patent Application[45] the Hearing Officer tried to find a reconciliation for the disparate ‘claim-by-claim’ and ‘holistic/specification’ approaches by holding that where the application was yet to be granted and an inventorship contest arose, the specification could best be used to adjudge inventorship but that where the patent application was granted and the claims successfully issued, the claims were to be the ‘bone of contention’. The hearing officer said:

On this point and as Norris recognised, I am not forgetting the fact that entitlement proceedings may be launched before there are any claims. However, it is noteworthy that in all three cases, Norris, Viziball and Henry Brothers, the judges and hearing officers involved did in fact turn to the claims to help them identify the inventive concept. The conclusion I draw from this is what where claims exist, it is quite permissible to use them as an aid to identifying the inventive concept. If there were no claims, of course, one would have to identify the inventive concept from whatever material was available.[46]

 

The Hearing Officer allowed the application to proceed in the joint names of the disputing putative inventors, but apportioned entitlement to the patent on claim-by-claim basis.[47] Upon gleaning what the inventive concepts of the claims were the sources of inventive concepts were ascertained, and on that basis entitlement to the patent was apportioned.

 

Collag v Merck[48] followed Henry Bros. It avoided using the claims alone as the basis for attributing ownership, instead extrapolating the inventive concepts from the specification as a whole. In Stalenco Fibre Optics v Bioprogress Tech. Ltd,[49] however the court took into account Henry Bros’ ‘holistic/specification’ approach but adopted the claim-by-claim approach due to the fact that the disputing parties had opted for this as the basis for adjudication of the dispute.[50] Further to this came the first instance decision of Judge Fysh in Markem v Zipher,[51] where it was decided that (as though regurgitating Minnesota Mining and Manufacuring[52]) where an application had only been filed and claims were not yet advanced it was right to look at the specification, but where the claims had been advance then the claims were to be considered the invention(s). The Court stated that:

 

(a) In the case of the granted patents, a fortiori when one which has undergone narrowing during prosecution, this is not difficult. I have therefore construed the relevant claims in the usual way. Having done so, I have gone on to inquire whether so construed they cover what as a matter of evidence was clearly devised by the claimant at an earlier time. If that yields an affirmative answer and there is requisite causation (see below), prima facie the invention subject of the claim belongs to the referrer.[53]

 

Judge Fysh, before making this statement, had traced the evolution of the case law on this aspect of patent law. He acknowledged the prevailing position – in which the ‘holistic/specification’ approach appears to prevail over the ‘claim-by-claim’ approach – but preferred the latter in on the basis of the facts of the case before him.[54] This is largely because he was convinced, as the facts of the case appeared to him, that the defendants had purloined the inventive concepts of the plaintiff (an ex-employer) which had been kept with them in form of confidential information. Therefore, as the judge considered, justice could best be served if the court was not to be carried away by the specification or disclosure details. The court had to simply look into each claim to see which of them bore the inventive ideas of the plaintiff.

 

On appeal Lord Justice Jacob, with whom Lord Justices Kennedy and Mummery agreed, restated the primacy of the ‘holistic’ approach. He distinguished the claims from specification on a functional basis. He emphasized that the claims were only to identify the extent of monopoly the inventor is entitled to. The specification however was to disclose (and enable) the invention upon which claims would be founded. Therefore the determination of inventorship should, in Jacob LJ’s view, proceed on the basis of contribution to the chief technical contents of the specification.[55] He built his reasoning upon s 14(5) (d), modelled after Article 82 of the European Patent Convention (EPC), which requires that claims must be so linked as to form one inventive concept;[56] consequently the term ‘invention’ at application stage cannot be concerned with claims. So too must it be in relation to entitlement questions in all cases, Jacob LJ reasoned, for inventorship questions are concerned with an inquiry into what persons furnished the heart of the invention. He said:

 

What one is normally looking for is “the heart” of the invention. There may be more than one “heart” but each claim is not to be considered as a separate “heart” on its own. That is consistent with the view of Laddie J. in University of Southampton’s Applications [2005] R.P.C. 11.[57]

 

Jacob LJ consolidated this position further in IDA Ltd v Southampton University.[58] Furthermore, in Welland Medical Ltd v Philip Arthur Hadley[59] the ‘holistic’ approach was recently confirmed as the prevailing rule in assessing the subject-matter. 

 

The matter is, however, not so simply settled. The case of Statoil v Southampton[60] brings the complexity inherent in the ‘holistic’ approach to the fore.[61] While Jacob LJ talked about there being one ‘singular or general inventive concept’ in patent applications – drawing analogy from the Greek fable of the Hedgehog with one broad trick and the fox with multifarious flimsy tricks[62] – Statoil (although accepting the ‘holistic’ approach) explains that there might be situations where there is a plurality or multiplicity of inventive concepts in the specification. This is one point which Jacob LJ did not address squarely in his judgements, which emphasised the ‘holistic’ element primarily. Mr Hayword as Hearing Officer said:

 

This is point has not been clearly addressed in any of the recent authorities. There is a hint at it in paragraph 25 of Stalenco that in this respect granted patents are different from patent applications, but it is not clearly stated and would in any case be obiter. It seems to me that whilst section 14(5)(d) requires there to be an inventive concept that links all the claims, it doesn’t exclude the possibility of other inventive concepts being present. Accordingly, and in the absence of clear authority to the contrary, I am not going to rule out the possibility that there could, for inventorship and entitlement purposes, be more than one concept or “heart” in a granted patent. Equally, it is clear I should not be scouring the specification looking for inventive concepts in every nook and cranny?[63][Emphasis added]

 

He ends with the position that, in such situations, the claims should be consulted to elicit the precise nature of the inventive concept. This seems on the surface a plausible approach to take situations where the inventive concepts are plural and may or may not link to form one singular inventive concept, especially in light of the fact that s 26 of the UK Patents Act 1977 shields such invention(s) from being impugned in any proceeding once it has been granted.

 

 

3.      Avoiding the ‘claim-by-claim’ quagmire

It is, however, the argument of this article that any approach based upon the consideration of the claims should be avoided in its entirety, irrespective of situations in which there may be multiple inventive concepts. The unsuitability of the ‘claim-by-claim’ approach to the UK’s circumstances therefore forms the next topic of discussion. It is important in this regard to demonstrate the demerits in the claim-by-claim approach in a manner which builds upon and goes beyond Jacob LJ’s reasoning.

 

In this regard practice in the USA offers a valuable point of comparison, as the USA has an age-long established ‘claims-centric’ Patent system.[64] The American patent jurisprudence is arguably the most engaged and exploited in the world of today, judging by the preponderance of patent litigation.[65] However while there is much that can be learnt from the US position, such lessons must be sieved with caution. This is particularly the case with respect to inventorship. The American patent jurisprudence places a high premium on the claims in inventorship and entitlement matters, principally because the claims are considered to form the epicentre of granted patents and thus are taken to represent the ‘invention’.[66] Contributing to just one claim is enough to qualify as a co-inventor in the USA.[67] 

 

This article argues that for three fundamental reasons it would be necessary for the UK to avoid this approach. One is reason, which is developed below, is that it would not be in sync with the universal spirit of patent law philosophy with regard to the functional relationship between the specification and claims. The second is that the provisions of the UK Patents Act 1977 do not acknowledge the claim-by-claim approach, nor is there legal precedence to support it. Adopting it therefore, it is submitted, will allow a propensity for a fragmentation of ownership over a granted patent. The third is that will create opportunities for false inventorship assertions. Each reason will now be expounded upon in turn.

 

4.1 The relationship between the specification and claims.

   

Four arguments can be advanced towards drawing this distinction between patent claims and specification on the basis of the functional relationships between both; these arguments are however connected. They are as follows:

 

1)      that the specification, being a compendium of the inventor’s disclosure, serves as the quid pro quo for patent protection,

2)      that the specification functions as the touchstone of proportionality between the disclosure made by the inventors and the scope of legal monopoly sought through patents,

3)      that the specification provides a background to understanding the inventor’s invention as expressed in the claims, and

4)      that the specification has more stability, than the claims, across lifecycle of the patent.

 

A juxtaposition of the claims vis-à-vis the specification when it comes to each of these four arguments will be of assistance.

 

The first argument concerns the disclosure on the basis of which patent protection is granted. It cannot be overemphasised that the quid pro quo of a patent grant is the disclosure of an invention[68], in such a manner that it can be reproduced.[69] The disclosure contains the new technical teaching which the inventor has furnished any given technical field with; it enables the dissemination of information about the invention.[70] The disclosure of this technical teaching is contained in the patent specification. In the recent American decision of Arlington Industries, Inc v Bridgeport Fittings, Inc,[71] Justice Lourie (after considering the specification as the ‘heart’ of the patent) went on to say:

 

But, at bottom, we are reading a patent specification to see what the inventors invented, what they disclosed, and how they conveyed that information. A patent is a teaching document. In almost all cases, the inventors, and their patent solicitors, knew what was invented and generally disclosed their invention in competent language.[72]

 

Fromer, in making a case for the centrality of the specification, argues that the teaching essence of the specification can be perceived from the audience it is addressed to.[73] The specification is addressed to technicians who intend to put the invention into effect in any fashion, while that the claims on the other hand are addressed to legal persons who are concerned with the extent of monopoly entitled to the inventor[74]. There is corroboration for this position from Giles Rich,[75] as he said on another occasion that:

 

What the inventor regards as his invention has very little, if anything, to do with most claims. Claims are drafted by attorneys and agents. Their wording ultimately must satisfy patent office examiners that they distinguish, distinctly and with particularity, from all prior art known to them…It is the claims that have determined what infringes the patentee’s right to exclude, construed in the light of the specification…[T]he claims are the measure of the patentee’s right to exclude rather than the measure of what was invented.[76]

 

Liivak is of the view that the true “invention” is that which is embodied in the specification; explaining further that these embodiments put together bear the requirements of patentability which are abstracted or modified into what is called ‘claims’.[77] This point further addressed below. The specification covers the technical field to which the invention relates, the background art, a statement of the invention, its advantages and detailed drawings or instructions on how to put the invention into practice.[78] The specification serves as a compendium of the invention showing that the technical teaching for which legal monopoly is sought is in the inventor’s possession.[79] This is why Jacob LJ succinctly calls the inventive concepts disclosed in the specification the ‘Eureka moments’,[80] simply because they predate those in the claims.

 

Akin to Jacob LJ’s view is that of Cotropia. Cotropia explains that an invention could be perceived from two perspectives: the ‘external invention’ angle and the ‘claim-centred’ angle.[81] About the external invention, he says: “Under the external invention, the technical information and discussion contained in the patent’s specification define the invention”.[82] In relation to the claim-centered angle, however, he holds that: “The claim-centered invention, in contrast, is defined by the patent’s claims”.[83] He professes conviction that the best approach to identifying invention is to go by the external invention angle, and one of the reasons he gives (which is identical to that of Jacob LJ) is that external invention relates to inventive technical information possessed by the inventor before an application for patents is embarked upon.[84]

 

The ‘Eureka moments’ (i.e. the inventive steps or concepts, if there are more than one) must combine together to form a single technical teaching in the specification. Otherwise there would be a mere ‘collocation’ without any interaction or connection between them.[85]Both Article 82 of the EPO and the s 14(5)(d) of UK Patent Act require that the inventions must connect so as to form a single inventive concept at the time of application, although it is enough that there is a technical relationship between these technical features.[86] Even where the determination of the interconnection between inventive steps relates to the claims,[87] such assessment will be done in the light of the specification.[88]

 

The claims, on the other hand, are the ‘definition’ of the invention as opposed to the ‘description’ of the invention contained in the specification. Chisum explains that the claims serve to identify what the inventor regards as his invention for patentability purposes[89] and therefore the extent and bounds of protection sought.[90] Each claim is considered as if it were in its own right as a patent[91]. More so, each claim is considered a solution to a given technical problem[92].

 

But the truth is that claims are simply abstractions from the specification, covering a class of embodiments that share only some operating principle or functional idea.[93]Chiang relays a possible example of a situation, originally given by Merges and Duffy,[94] whereby the original (table-top) transistor invented by Bell Laboratories which hinged on the inventive concept of using semiconductor material in conjunction with switch electronic signals, could be stretched to cover micro-transistor and at further abstraction could be stretched to cover transistors systems of modern times.[95] Generally the first independent claim contains core technical features presented in the specification (excluding inconsequential technical matters), and then dependent claims are built upon the first independent claim. There may further be other independent claims dedicated to particular aspects of the inventive concept(s) contained in the specification.[96] This reflects the fact that claims do not have existence of their own independent of the specification.[97]

 

This takes us to the second argument which is that the specification serves as the touchstone of proportionality between the technical teaching supplied and the proprietary monopoly deserved.[98] It is a trite rule in patent law that the inventor cannot get legal protection beyond that which he has contributed to any given technical field.[99] This is known generally in patent law parlance as the doctrine of ‘sufficiency’. In EXXON/Fuel Oils[100] the Technical Board of the EPO said among other things:

 

…claims must be supported by the description, in other words it is the definition of the invention in the claims that needs support…[T]his requirement reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified.[101]

 

This principle has been reiterated in a cascade of UK reported cases, prominent amongst which is Biogen v Medeva.[102] In a more recent UK on ‘sufficiency’, Generics v Lundbeck,[103] the House of Lords, building upon Biogen v Medeva, seemed to have arguably misused the phrase ‘technical contribution’. This is so because the court adjudged the claims as the technical contribution, when it should have considered the inventive concept disclosed in the specification as such.[104] The implication of this is that it is apt to abrade the primacy of the specification over the claims in inventorship disputes, as it could cause a diversion of focus from the specification to the claims in the search for the inventive concept(s).[105] The term ‘technical concept’ should relate to the novel and inventive technical information which forms the basis a patent application and subsequently issued of claims if the European Patent Office’s jurisprudence were rightly followed.[106] The House of Lord, however, held that the inventive concept or inventive step is simply the kernel of the invention (in this case the disclosed process), while the technical contribution is the evaluation or utilization of the inventive step (the patented product resulting from the process).[107] In truth however both the product and process in this case before the court were technical contributions to the art; only that one was limited (the process), while the other was unlimited (the product). In other words, the inventor could lay claim to the product in issue regardless of whatever process it was derived from, but he could not however claim any other process other than that he had disclosed.

 

The Exxon case had actually used the term ‘technical contribution’ in relation to the technical teaching contained in the specification but not that contained in the claim. The Board said:

 

Although the requirements of Article 83 and Article 84 are directed to different parts of the patent application, since Article 83 relates to the disclosure of the invention, whilst Article 84 deals with the definition of the invention by the claims, the underlying purpose of the requirement of support by the description, insofar as its substantive aspect is concerned, and of the requirement of sufficient disclosure is the same, namely to ensure that the patent monopoly should be justified by the actual technical contribution to the art. Thus, a claim may well be supported by the description in the sense that it corresponds to it, but still encompass subject-matter which is not sufficiently disclosed within the meaning of Article 83 EPC as it cannot be performed without undue burden, or vice versa.[108]

 

Sufficiency as a doctrine ensures that the monopoly claimed does not exceed the technical contribution.[109] This doctrine applies to cases where an inventor seeks to claim matters which fall within the specification but which are not disclosed or technically taught by it. For example, if chemical A+B+C+D was disclosed in the specification, without B+C being specifically taught or identified, one would not be able to claim B+C. An example of this is seen in Glaxo Group Ltd’s Patent where the court said: “(u)nexpected bonus effects not described in the specification cannot form the basis for a valid claim of this kind.” This position is also the reason why we have selection inventions (i.e. “a particular compound or relatively small group of compounds from the larger groups previously disclosed in broad terms”)[110], largely in experimental sciences[111], whereby matters which are intellectually adumbrated in the specification could be specifically selected to form new technical teachings deserving patent grant.

 

The third argument is concerned with the background against which to understand the inventor’s intention.[112] Understanding the intention of the inventor as expressed in the claims has been one of the most convoluted and debated matters in patent law.[113] It is generally agreed in patent jurisdictions that the claims should be the only basis to determine scope of monopoly the patentee is entitled to, but it is also appreciated that words sometimes can be deficient when it comes to fully rendering intention.[114] Literalism in interpreting patent claims will “leave room for—indeed encourage—the unscrupulous copyist to take make unimportant and insubstantial changes or substitution in the patent which  though adding nothing, would be enough to take the copied matter outside the claim, and hence outside of the reach of law”.[115]

 

As a consequence the doctrine of equivalents was espoused to deal with non-literal patent infringement.[116] Therefore it seems right to say that the more claims are broad and certain, the less would be the reliance on the doctrine of equivalents.  In Kirin Amgen v Hoechst Marion Roussel Limited[117] Lord Hoffmann, with concurrence of other judges, denied the existence of a general doctrine of equivalents in the UK[118].        It was however decided that if patents claims are well drafted they could encompass after-arising technology which built upon the inventive concept of the patent. This possibility would be contingent on “whether the person skilled in the art would understand the description in a way which was sufficiently general to include the new technology.”[119]

 

Collins is of the position that the extent to which claims can be used to hold subsequent technologies as infringing depends on the setting or time within which the new technology is compared with purportedly infringed claims and specification.[120]If the setting or time is held to be the time of filing the application then the extent to which subsequent technology is captured will be limited. If however it there is no time frame against which to make this comparison (so long as the patent is not expired) then the specification can be used to catch any new technological adaptation of its technical teaching[121]. This shows that the specification helps in situations where the claims have inadequately claimed a monopoly.

 

The fourth argument relates to stability. Stability or durability is another factor which distinguishes the claims from the specification. It is a fact that while patent claims are susceptible to being interpreted broadly or narrowly, the specification bears more stability across the lifecycle of the patent, so long as the skilled person in the art could put it to use without undue experimentation.[122] Claims are also protean in nature since while they could be broad at the time of application they could have been thoroughly revised before grant or in fact expunged outright. Additionally the conception of claims could also be determined by economic or market interests or considerations.  Thus Jacob LJ said:

…it is often the practice of patent agents to put in first drafts which are wider than they expect to end up with so as to draw a wide search. As for the final claims in the patent as granted, their form and content will depend upon a number of individual factors—what has turned up in the prior art forcing reduction in scope, what subsidiary claims the patent agent has formulated based on the description and what monopoly is actually thought to be valuable (there is no point in claiming wider).[123]

 

 Details in the specification may admittedly also be revised or eviscerated, but this would mean that claims which could have been founded upon the expunged parts of the specification would not come into light at all. As the claims derive their own lives from the specification[124] the inventor has limited choice over his disclosure in relation to what he claims; for so long as he claims a particular advance in a field of science he must show the difference between his own inventive ideas and those which previously existed[125] and must also supply details sufficient to put the invention in the hands of the skilled man.[126] It follows therefore that the specification bears more stability or durability than the claims.

 

The economic or market significance of patent claims influences the protean dynamics of claims.  Patent agents, who never even partook in the inventive process, draft claims based on market considerations, so as to be able to secure as much monopolistic breadth as possible. An American case corroborates this proposition; the case of Solomon v Kimberley-Clark.[127] In this case the court appreciated the possibility that the attorney might have entirely conceived one of the most valuable claims in the patent, but held that this was not enough to make the attorney a joint inventor since he was doing no more than discharging his fiduciary duties towards the inventor.[128] However, in the case of the specification, although it is also drafted by patent agents, the drafting is closely tied to the inventive concepts disclosed by parties involved in the inventive process. Therefore the drafting of the patent specification bears more proximity with the inventive process than the claims which are usually an abstraction from that process.

 

From the foregoing analysis one can extrapolate that the specification is the sum of inventive concepts provides the heart and backbone upon which the claims find subsistence. Therefore anyone who contributes to the inventive concept or sum of inventive concepts in the specification would have, either alone or in collaboration with others, joined in providing the quid pro quo for patent grant; they have supplied the measure of commensuration for patent monopoly, devised the background against which to understand the inventor’s intent and facilitated that which is durable and certain in nature. One might also add that it better mirrors the intention of parties if they jointly assembled the technical details of the specification to jointly own claims derived therefrom.

 

4.2 Claim-by-claim approach and the fragmentation of patent ownership

 

Another reason the claim-by-claim approach should be eshewed in the UK that there are no body of rules to expediently support it as is the case in the USA.  A synopsis on the history of joint inventorship in the USA is firstly necessary to help understand the dynamics and peculiarities of the US position. Thereupon focus will be directed unto exploring why, as a consequence, the UK should avoid this practice owing to the UK’s particular circumstances.

 

Koneckny traces the evolution of joint inventorship in the USA.[129] He starts off by saying that although in the early times of joint inventorship the patent statute(s) never seemed to show aversion towards joint inventorship the courts evinced grave apathy towards the idea. This was reflected in judicial strictures placed on joint inventorship, such as requiring acclaimed joint inventors to contribute to all the claims—the ‘all-claims’ requirement.[130] This meant that all the claims in the patent had to be simultaneously and substantially contributed to by the co-inventors.[131] This judicial bias towards joint inventorship was induced by the rule that co-ownership of patents resulted in each party gaining an undivided equal entitlement to the rights arising from grants, a situation which would not seem right if parties had unequally forged the claims.[132]

 

Most prominent in this regard was the case of Worden v Fisher.[133] In this case the court held all the claims valid except one which had not been jointly worked out by the parties claiming joint inventorship. This jointly invented claim was rejected as invalid. In another case of that time, Stewart v Tenk, [134]Stewart and Campbell had contributed separate parts that were combined towards a patented machine. The components of this machine formed the subject-matter of several claims which had been jointly conceived by both, except the tenth claim which was attributed to only Stewart; the court ordered that their contributions be severed and distinctly patented. The court said:

 

….the evidence shows that Campbell did not contribute to the invention covered by the tenth claim. Stewart was the sole inventor of the slicing and coring-knife, and the patent for that, as a separate and distinct part of the machine, should have been issued to him alone.[135]

 

Similarly in DeLaval Separator Co. v. Vermont Farm Machine Co[136] although the parties had jointly contributed to the matters contained in the specification they had not jointly conceived all the claims. The court found that there was not joint inventorship for this reason. There was however an exception in cases where the contribution of the parties were directed toward a combined claim. Thus the court essentially stated that:

 

When a claim covers a series of steps or a number of elements in a combination, the invention may well be joint, though some of the steps or some of the elements may have come as the thought of but one.[137]

 

Another exception arose in circumstances where particular claims had been created by an employer and other improvement claims had been the work of his employees.[138] In such a situation the employee’s improvements were attributed to the employer as natural annexations of his inventive ideas. This reasoning was followed in International Carrier-Call & Television Corp. v Radio Corp. of America,[139] with the court holding exceptionally that the employer would not be entitled to improvements which were radically distinct from that which the employer intended. There was a further extension of this reasoning in General Motors Corp. v. Toyota Motor Co.[140] In this case two employers had worked different claims without being under the technical direction of their employer. Nonetheless the court held that that there was joint inventorship under the reasoning that the invention was created for the purposes of their employer.

 

However, where none of these exceptions arose the claims had to be severed and separate applications had to be pursued. In re Sarett[141] is a case which confirms the implication of ruling against joint inventorship as the court said:

 

It should be clear that the patent could not legally contain a claim to Sarett’s sole invention under existing law because it would not have been the invention of the joint patentees. This rule of law forces the filing of distinct applications in many situations resembling that before us and creates the complexities and delays which could be avoided under a less rigid statute.[142]

 

However, as Fasse explains, there were cases such as SAB Industri AB v Bendix[143] which cast doubt on the existence of the ‘all claims’ rule on the basis that it had no foundation in statute or the patent office rules.[144] Fasse however posits that cases such as Mueller Brass v Reading Industries[145] did not clearly express doubt on the rule, but decided in favour joint inventorship despite acknowledging the difference in persons who had fashioned the claims.[146]

 

To clear doubts and to encourage joint technological engagements the law was reformed.[147] The 1984 amendment to s 116 of the American Patent Act of 1952, which was made to effect this change, provides that:

 

When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.

 

The implication of this is that where a party worked in conjunction with others towards a given technical end contributing to at least one, but not necessarily to all, of the claims he became a co-inventor and entitled to combine his own separately contrived elements with others to form a single patent.[148]

 

However the amendment of s 116 without also amending ss 261 and 262 (governing ownership of patents) in the self-same Act meant that:

 

each co-inventor presumptively owns a pro rata undivided interest in the entire patent, no matter what their respective contributions.  Several provisions of the Patent Act combine to dictate this rule……Thus, a joint inventor as to even one claim enjoys a presumption of ownership in the entire patent.[149]

 

This position has received fierce criticism.[150]Justice Newman in her dissenting judgement in the same case, Ethicon, took the view that it would be inequitable to allow a person to who had merely contributed to a single or few claims to assert equal ownership rights with those persons who had substantially contributed to the totality of the invention.[151] Despite this vigorous dissent, the majority’s position continues to prevail. Merely contributing to a claim therefore allows in the US one to become a co-owner bearing equal rights to those who devised the core inventive concept(s).[152]

The UK neither has a history nor practice similar to that of the USA on this subject, which makes it necessary that when disparate claims in a granted patent are ascribable to discrete entities in a collaboration, ownership over the ensuing patent should be commonly owned. However, the idea of adopting statutory provision(s) as in the USA to allow ownership on the basis of claim contribution would pave way for inequity and unfairness in inventorship matters, as persons who have marginally contributed to the overall inventive concept (although who may have significantly contributed to a claim or two) would assume an equal status as an inventor.

 

When the patent claims have a degree of technical contiguity but are owned by different persons the result may be competing, complimentary, or blocking patents (or a combination of these).[153] Claims are complementary when they can be combined to form one composite (inventive) entity;[154] Inventions are blocking when the use of one is likely to infringe the other;[155]and inventions are competing when they serve as alternative to each other.[156]

 

Let it be imagined that a patent is granted for Chemical A+B, to be used as a new dental formulation. Integer ‘A’, devised by Mr X, has the capacity to clean tainted or stained enamel. Integer ‘B’, conceived by Mr P, is able to treat gum infections. Additionally Mr. Z comes up with the idea of combining integers ‘A’ and ‘B’ in paste form, a form which was originally difficult for Messrs X and P to achieve. Integer ‘A’, integer ‘B’, and ‘A+B’ all qualify as independent claims.

 

If inventorship is considered along the claim-by-claim lines then the result would be that Mr. X would not be able to exploit matters falling within integer ‘B’-based claim(s) and the paste-based claim(s); Mr Y would not be able to practice matters falling within integer ‘A’-based claim(s) and the paste-based claims; and Mr Z not be able to practice integers ‘A’ and ‘B’ singularly except in their combined form as paste. Thus integers ‘A’ and ‘B’ would become complementary inventions, while integers ‘A’ and ‘B’ would serve as blocking patents against the paste-based combination of both integers, and vice versa. Let it be further assumed again that Mr. Z’s laboratory assistant, Mr W, comes up with a claim based on combination of integers A and B in tablet form. The paste-based claims and the tablet-based claims will then become competing inventions.

 

Thus it becomes obvious that the claim-by-claim approach is apt to cause the fractionalization of patent proprietorship. In general, and particularly in fast advancing sciences such as biotechnology (and also modular or complex technologies) where contiguous improvements to inventive concepts might be hit upon soon after the realization of  leading inventive concepts[157], this would pose problems for the exploitation of technology.[158] Those seeking to make use of technological matters contained in different patent claims (of same patent) would have to seek licences from each claim proprietor, and each of these claim proprietors would additionally have to engage in cross-licensing. This will throw up tedious and expensive licensing negotiations (i.e. transaction costs) and, in some cases, will require recourse to administrative remedies such as compulsory licenses.[159] Some inventions (i.e. claims) would eventually be left unexploited or unused because, because they are blocked, need to be assembled in combination with others to achieve their function or there is an alternative which is better and/or cheaper.[160] This could throw up a morass of complexities that come with patent thickets[161] or and patent anti-commons[162]–market failure. Applying economic theory to patents one can say a patent market failure may be said to arise in situations where economic value(s) which could to be derived from the use of patents cannot be achieved because of bargaining difficulties resulting from a divergence in the ownership of patents.[163]

 

 

4.3 Room for specious inventorship assertions.

 

Discussion on this point builds upon the argument made above that claims are protean and uncertain in nature. Since the choice of claims is discretionary these are not be a dependable starting point to found an inventorship claim. One unscrupulous advantage that it gives to a putative inventor is that, upon being able to show a nexus with other inventive entities or inventors, it allows him to wait till all the claims have been drafted or granted before then launching a claim of inventorship. Tresansky confirms this position upon reviewing American cases on this subject:

 

These cases strongly suggest that an inventorship determination should not be made until the specific nature of the contributions of each participant involved in the making of the invention is ascertained and the claims of an application have been drafted in substantially final form.[164]

 

Sherry opines that although where there are no claims the specification could be a starting point for determining inventorship where an application has not been filed; but in practice this is rarely the case.[165] She holds further that where an application has been filed one could assert inventorship on the basis of drafted claims but that if, upon patent grant, the claim which forms the core of one’s assertion is not successfully issued then one can be struck out of the list of co-inventors.[166]

 

More so, using the claims as the starting point could bring about inequity since claims could be subjectively expressed. To avoid subjectivity the approach in the USA (for example as seen in Trovan v Sokymat SA[167])  is to hold that “an inventorship analysis, like an infringement or invalidity analysis, begins as a first step with a construction of each asserted claim to determine the subject matter encompassed thereby.”[168] This way the court seeks to sieve out the inventive concept behind the claim objectively. But the truth is that the inventive concept contained in the claim is only a derived inventive concept; it is an abstraction from the specification.[169]The inventive concept contained in claims are therefore arguably more subjective than those contained in the specification given that the specification relates to established technical information, while the claims are merely protrusions of this. The broader the scope of protection sought, the broader the inventive concept would be, but the narrower the protection sought the narrower the inventive concept would be. Jacob LJ confirms this view in European Central Bank v DSS[170] saying:

 

Professor Mario Franzosi likens a patentee to an Angora cat. When validity is challenged, the patentee says his patent is very small: the cat with its fur smoothed down, cuddly and sleepy. But when the patentee goes on the attack, the fur bristles, the cat is twice the size with teeth bared and eyes ablaze.[171]

 

Thus claims could be narrowed or broadened to deny or support a person’s claim to inventorship, depending on the circumstances of the case. The same cannot be said for the specification which, beyond describing the ideas supporting the claims, provides a detailed account of the background, contents and history of the inventive concepts contained in it.[172] If an attempt is made to unfairly shrink the inventive concepts of the disclosed in the specification so as to deny another’s assertion of inventorship one diminishes the claims that can arise from and be supported by the specification. If, however, the sum of inventive concepts in the specification is left broad then a putative inventor would have to indicate those technical matters contained in the specification which emerged from him; the failure of which denies him entitlement.[173] Hence the specification serves well as the starting point for such considerations. If a party cannot demonstrate his contribution to or influence upon the specification, why should (s)he be allowed an easy route to entitlement by pointing to claims ascribable to him?

 

The American case of The Board of Education v American Bioscience, Inc[174] brings this situation to light. In this case the district court had held that the sole independent claim and its dependent claims could be attributed to the respondents and one of the appellants. On appeal however the court found for the appellants on the ground that the process and starting materials invented by the respondents was not the same as that which had been conceived by the appellants, and could not in fact have brought the claims into being. This shows simply that the court here was concerned beyond the claims, as it inquired into the source of the claims; in other words into the technical teaching responsible for the claims as contained in the specification.

 

In the very recent case of Falana v Kent State University[175] the plaintiff had devised the methods and chemical structure which had made it possible for the defendants to fashion the claimed chemical compounds. The defendants argued that inventorship revolved around the contrivance of claims but that the claim in issue, Compound 9, had nothing to do with the contribution of the plaintiff. The court disagreed, saying:

 

 The claims of the ’789 Patent are not limited to Compound 9. Instead, they claim a subset of the entire genus of naphthyl substituted TADDOLs—those which are RR enantiomers. Falana contributed to the conception of this genus by providing the team of which he was a part with the method for making these novel compounds. Falana’s lack of contribution to the discovery of Compound 9 itself does not negate his contribution of the method used by the other inventors to make the genus of compounds covered by the claims at issue.[176]

 

Here the court was not carried away by the wording of the claims but rather focused upon the whole technical teaching responsible for the claims of the patent issue which Falana (the plaintiff) had played a vital roles in.

 

One important point to make is that false inventorship claims are contingent upon the nature of the science to which patents relate.  It is possible to argue that the cases of Falana and American Bioscience turned out as they did because nature of the technical field to which the inventions relate[177](namely chemistry). A degree of specificity is necessarily required in such experimental science fields.[178]  The starting materials to a large extent have to be exact, the parameters have to be reasonably precise, quantification has to defined, and so on.[179] These conditions have to be stated in the specification so as to be able to support the claims. This would mean that the levels of abstraction, in form of claims, which could be made from the specification in experimental sciences would highly likely have close proximity with the specification. This does not mean that there cannot be generic claims (Markush claims) in experimental science, but this too would require exacting disclosure details and, as such, the levels of robust abstraction would generally be low.[180] Therefore it appears that for one to have substantially contributed to a claim in experimental science patents one would to have somehow influenced the specification’s formulation.

 

This contrasts with predictable arts—such as electronics, mechanics, IT, etc[181]—where the levels of abstraction that can be made from the specification could be broad. To use the words of Bernard Chao: “In cases where the technology is predictable, disclosing a single embodiment will often allow persons of skill in the art to practice other embodiments”.[182] Lemley and Burk have expounded upon the thesis that emergent technical fields are likely to be unpredictable, but mature areas are more predictable and these peculiarities affect the patentability of matters arising from them.[183] Thus, they opine, unpredictable sciences will usually have low inventive step requirements, but high disclosure and enablement requirements. On the other hand, predictable areas are likely to have high-inventive step requirements but lower disclosure requirements. The reasons provided are simply that emergent technologies (usually those arising from experimental sciences) would usually not have been fully explored and thus the average skilled person(s) in the field (for patent law purposes) cannot easily foresee the possible advancement. As such it would be more difficult to show obviousness and elaborate explanation of the invention will be necessary.[184] On the other hand, mature or established fields (usually predictable arts) would likely have been overly explored and as such the inventiveness requirement would be heightened, with minimum disclosure required to put the invention into practice.[185]

 

The two immediately preceding paragraphs therefore demonstrate that just as patentability could depend upon the nature of the art (i.e. whether it is experimental or predictable) so too could the propensity to assert false inventorship. Thus it will be less easy to claim inventorship speciously in experimental arts than predictable arts, even in circumstance where a claim-by-claim approach were followed. As a result applying the claim-centric approach to inventorship in a predictable field will allow for spurious inventorship. For example if A, while working in connection with B, had conceived a matter which happens to form the basis of a claim within a subsequently conceived generic conception of matters (i.e a disclosure) by B but founded upon sum of distinct principles (from those conceived previously by A). This will give reason for A to claim co-inventorship with B, if the claim-by-claim approach were adopted. However, going by the specification rather than the claims in ascertaining inventorship would help avoid such an unfair outcome.

 

This is what happened in Markem v Zipher. The plaintiff (a former employer) purportedly had an inventive idea which they believed had been disclosed to some of defendants (their erstwhile employees) confidentially, with the latter improving on it and leading to the disclosure of a new technical teaching. When a patent was granted to the defendant the plaintiff sought ownership over claims which had been founded on the purported inventive conceive concept(s) they had allegedly disclosed to the defendants. The Court of Appeal, overturning the High Court decision, held that since the plaintiffs could not show their conceptual contribution to the contents of the specification they could not consequently establish ownership to any of the claims arising from the patents. The court found that the supposed inventive concept disclosed confidentially was not in fact confidential as professed and thus was part of the state of the art. If further held that the only likely remedy available to the claimants was a revocation of the claim in issue on the basis on prior disclosure; not joint inventorship.[186] The court however did hold that even if the purportedly usurped inventive concept qualified as ‘confidential information’ and was subsequently advanced as to form the subject-matter of the specification the Comptroller of patents had sufficient discretion to do justice to the plaintiff (whether by imposing compensation or ordering a licence etc.) but not to declare joint inventorship in such situation: there was no joint conception of the inventive concept(s) contained in the specification.[187]

 

 

5. Conclusion

 

It is argued in this article, after a review of the US and UK practices, that preference should be given to the sum of inventive concepts contained in the specification over those contained in the the claims when it comes to the representation  of ‘invention’ in entitlement disputes. This article argues that the specification should be the fulcrum for determination in inventorship contexts.

 

This should be the case as, because judging by functional relationship between the claims and specification, the specification represents the raison d’etre of the claims. The specification is more stable across the lifecycle of the patent;  serves as guide in determining deserved monopoly where claims are disputed (i.e. sufficiency and interpretation of claims); and going by the specification helps to prevent false inventorship assertions. Additionally an approach utilising the specification helps to avoid the fragmentation of entitlement when it comes to a singular patent with several claims.

 

In summary, except to the extent that claims account for the economic value of an issued patent, the information contained in the specification is technically superior to the claims. This therefore makes the specification the better point of reference in inventorship disputes.