What is an inventor?
The South African Patents Act No. 57 of 1978 (“the Act”) does not provide an explicit definition for the term “inventor”. One can, however, in the context of the Act and common law assume that the term “inventor” refers to a person that conceives of something that qualifies as an invention in terms of the Act. Accordingly, a person that conceives of something that is considered novel, inventive and capable of being applied in trade, industry or agriculture, may qualify as an inventor.
There is a common misconception under the general public that an inventor is also the owner of any patent/patent application directed at the invention. This, however, is not always the case. The concepts of inventorship and ownership are two completely different, although related, concepts. The owner of rights in and to the invention, may be the inventor or any other person acquiring from the inventor the rights in and to the invention. It is therefore completely possible for an inventor to never really be the owner of his/her own invention and, likewise, for the owner of the invention to not have made a single inventive contribution thereto. An example of this would be where an employee conceives an invention under an agreement in which any invention developed by the employee is automatically assigned to the employer.
It is further worth noting that one or more persons may be inventors of a single invention. In other words, if two or more persons conceived of the invention, the persons may be considered co-inventors (or joint inventors).
Who is an inventor?
Any person (or persons) that has made an inventive contribution to an invention may be considered an inventor. The question of whether or not a person may be considered an inventor is therefore a question of fact. However, the answer to this question is not as simple as one would think.
A helpful formulation to determine whether or not a person is an inventor, is provided by Laddie J in University of Southampton’s Applications [2005] RPC 11 at 234, paragraph 39 that reads: “First it is necessary to identify the inventive concept or concepts in the patent or patent application. Secondly, it is necessary to identify who came up with the inventive concept or concepts. He or they are the inventors. Thirdly, a person is not an inventor merely because he ‘contributes to a claim’. His contribution must be to the formulation of the inventive concept”.
Deciding whether or not a person is an inventor, therefore first involves assessing the invention to determine the nature of the inventive concept and to then determine who contributed to the inventive concept. In some cases this may be quite complex because inventiveness in general is somewhat subjective and inventors themselves will often not know exactly where inventiveness lies.
That said, if a person contributes to the core of the invention, or the features of the invention which are new and provide some sort of advantage (or “wow”-factor), such a person may generally be considered an inventor. A person is not an inventor simply because he or she contributed to the invention. If a person merely contributes to the invention by including features that are commonplace in the art, or simply conducts some frivolous research relating to the invention, the person will not necessarily have a claim to inventorship. For example, a person whose only contribution to a new and inventive smart communication device is the addition of a standard USB charging port would not be considered an inventor.
Patent claims may be useful in identifying inventorship. The person that brought together the features of a claim that includes an inventive contribution may be considered an inventor. However, the person that simply contributes to a claim supporting the inventive claim may not necessarily be an inventor.
As discussed above, an invention may have more than one inventor. In such a case, the inventors may be the persons who, together made one single inventive contribution to the invention, or different persons who made different inventive contributions to a single invention. All persons listed as inventors in respect of an invention must have contributed to the invention, however, such contribution need not have been equal.
Why is it important to identify the inventor/s?
Listing the inventors of an invention is crucial, because naming the inventors incorrectly (or not naming all the inventors) can lead to a patent being vulnerable to revocation. Upon filing a patent application, each inventor signs a declaration that he/she is the true inventor. A misrepresentation on this declaration is one of the grounds for revocation of a patent in South Africa. Further, without an agreement stating the contrary, all inventors listed on a patent application have an equal and undivided share in and to any patent that grants from the application. As such, each inventor has an important say in matters and dealings relating to the invention and any patent filings resulting from it. Failure to clearly identify and confirm the rights of joint inventors can, and often does, lead to various disputes and lost opportunities.
By Hennie Louw, Patent Attorney, reviewed by Erik van der Vyver, Patent Attorney
