Intellectual Property and Collaborative Research

CRS Report for Congress
Intellectual Property and
Collaborative Research
August 16, 2005
John R. Thomas
Visiting Scholar
Resources, Science, and Industry Division

Congressional Research Service ˜ The Library of Congress

Intellectual Property and Collaborative Research
Summary
Innovative individuals and firms have increasingly engaged in collaborative
research. The greater complexity of modern technology, heightened specialization
in advanced fields, improved means of communications, and the desire to share the
risks and expenses of high technology research have each contributed to this trend.
Congressional interest in creating an environment conducive to collaborative research
has resulted in numerous legislative initiatives. The Patent Law Amendments Act
of 1984 and the Cooperative Research and Technology Enhancement (CREATE) Act
of 2004 are among those that have clarified patent law rules regarding joint inventors
and cooperative research endeavors.
Observers have nonetheless expressed concerns that applicable patent law
standards may discourage, rather than foster, collaboration among researchers. Some
patent law experts believe that current rules identifying the members of a research
team who qualify as joint inventors are too lenient, vague, and unpredictable. This
standard may lead to uncertainties with respect to patent ownership. It may also
encourage strategic claims drafting during patent acquisition and enforcement.
Another target of concern is the current legal rule governing the joint ownership
of patents. In the event more than one individual is considered to be a co-inventor
of an invention that is patented, each such person is regarded as a joint owner of that
patent. U.S. patent law further deems a joint owner of a patent to enjoy a “tenancy-
in-common,” which allows him to exploit a patent without regard to the other
owners. This property rule appears to maximize the opportunity for exploitation of
the patented invention in the marketplace. Yet, because every inventor receives full
rights in an invention no matter what the extent of his contribution, this ownership
principle could possibly lead to inequitable distributions of the profits of patented
inventions.
If Congress should deem a legislative response to be appropriate, some
commentators have called for more specific legislative guidance on the joint
inventorship standard. A possible reform would be to stipulate bright-line rules, or
possibly a list of factors that courts should consider, with respect to joint
inventorship. On the other hand, fashioning a workable standard of joint
inventorship might prove difficult or ultimately be unnecessary.
In addition, alternative ownership rules–such as considering ownership on a
claim-by-claim, rather than a patent-by-patent basis–are a possibility. In weighing
the desirability of any alternative to the current regime, concerns for ease of judicial
administration and the diminution of the incentives of one joint owner to
commercialize the patented invention may be appropriate. However, the patent
statute’s joint inventorship and joint ownership standards are effectively default rules.
As collaborative researchers may reach alternative arrangements via contract, legal
reform in this area may not be a compelling need.

Contents
The Role of Collaborative Research in Technological Innovation............2
Patent Law Fundamentals...........................................4
Patents and Innovation Policy....................................4
Patent Acquisition and Enforcement...............................6
Federal Legislation Impacting Collaborative Research and the Patent System...8
The Patent Law Amendments Act of 1984..........................8
The CREATE Act............................................12
Current Issues....................................................13
Standards of Joint Inventorship..................................13
Consequences of Joint Ownership................................16
Concluding Observations...........................................20

Intellectual Property and Collaborative
Research
Congressional interest in creating an environment conducive to collaborative
research has resulted in numerous legislative initiatives. The intellectual property
laws are among those that have been amended to account for the needs of joint
researchers. The Patent Law Amendments Act of 1984,¹ the American Inventors
Protection Act of 1999,² and the Cooperative Research and Technology Enhancement
(CREATE) Act of 2004³ each clarified patent law rules regarding joint inventors and
cooperative research endeavors. These laws have attempted to facilitate cooperation
among researchers, while at the same time maintaining patent-based incentives that
are sufficient to stimulate research in the first instance.
Legislative attention towards collaborative research issues has been stimulated
by the growing prominence of research partnerships among and between private
sector firms, universities, and the federal R&D establishment.⁴ Many reasons explain
why cooperative projects have become an increasingly attractive vehicle for
innovation. The greater complexity of modern technology has caused individuals and
firms to specialize, necessitating cooperation in order to achieve desired results.⁵ The
advent of advanced communications networks, including the Internet, has further
enabled collaboration.⁶ The desire to share the risks and expenses of high technology
research among multiple participants has further stimulated cooperative ventures.⁷
Observers have expressed concerns, however, that applicable patent law
standards may hinder, rather than foster, collaboration among researchers. Some
patent law experts believe that current rules identifying the members of a research
team who qualify as joint inventors are too lenient, vague, and unpredictable.⁸
Another target of concern is the current legal rule governing the joint ownership of

¹ P.L. 98-622, 98 Stat. 3383.
² P.L. 106–113, 113 Stat. 1501.
³ P.L. 108-453, 118 Stat. 3596.
⁴ CRS Issue Brief IB89056, Cooperative R&D: Federal Efforts to Promote Industrial
Competitiveness, by Wendy H. Schacht.
⁵ See Rochelle Cooper Dreyfuss, “Collaborative Research: Conflicts on Authorship,
Ownership, and Accountability,” 53 Vanderbilt Law Review (2000), 1161.
⁶ See Lawrence M. Sung, “Collegiality and Collaboration in the Age of Exclusivity,” 3
DePaul Journal of Health Care Law (2000), 411.
⁷ Dreyfuss, supra note 5.
⁸ See Joshua Matt, “Searching for an Efficacious Joint Inventorship Standard,” 44 Boston
College Law Review (2002), 245.

patents. U.S. patent law allows each owner to exploit a patent without regard to the
other owners.⁹ This legal arrangement appears to maximize the opportunity for
exploitation of the patented invention in the marketplace.¹⁰ Yet it could possibly lead
to inequitable distributions of the profits of patented inventions and may promote
mistrust among potential joint researchers.¹¹
This report reviews intellectual property laws and policies governing
collaborative research. First, it reviews the increasing tendency towards joint
research in high-technology fields. After providing the fundamentals of patent law
and innovation policy, the report then reviews the detailed rules of patent law as
applied to collaborative research. The report next surveys issues concerning the
patent law standards for joint inventorship and joint ownership, and provides some
concluding observations.
The Role of Collaborative Research in
Technological Innovation
Technological development has increasingly resulted from cooperative ventures
formed between and among the private sector, universities, and government entities.¹²
Several developments in the modern research environment have contributed to this
trend towards collaboration. One factor is the growth of the communications
networks, including the Internet, which collectively have made collaboration over
long distances much easier.¹³
The growing complexity of modern technology has ramifications upon the cost
of conducting research, the specialization of researchers, and the ability to innovate.
Cooperation may benefit firms by allowing them to share risks and costs. High
technology research is often expensive, and many firms have found limited
associations with other entities more cost effective than hiring needed expertise on
a permanent basis. Coupled with reported declines in public financing, cost increases
have also encouraged academic researchers to find new sources of financial support.¹⁴
The extreme complexity of many modern technologies has also led to the
growing specialization of individual researchers. Because few persons are able to
master numerous sophisticated and ever-advancing scientific fields, breakthroughs

⁹ 35 U.S.C. § 262 (2004).
¹⁰ Robert P. Merges & Lawrence A. Locke, “Co-Ownership of Patents: A Comparative and
Economic View,” 72 Journal of the Patent and Trademark Office Society (1990), 586.
¹¹ Philip Konecny, “Windfall Property Rights for the Left Out Co-Inventor Who Gets Let
Into the Patent,” 16 Santa Clara Computer & High Technology Law Journal (1999), 141.
¹² See Anna Martina Tyreus, “H.R. 2391: Protecting Universities in Collaborative
Research,” 82 Washington University Law Quarterly (2004), 557.
¹³ Id.
¹⁴ See Brett Frischmann, “Innovation and Institutions: Rethinking the Economics of U.S.
Science and Technology Policy,” 24 Vermont Law Review (2000), 347.

at the frontiers of scientific knowledge increasingly depend upon interdisciplinary
research.¹⁵ Trends for individual researchers are also reflected within the institutions
in which they operate. Even elite, multinational enterprises may lack the expertise
to perform cutting-edge research on their own. They may instead turn to government
laboratories, universities, or other entities in order to gain access to expertise and
equipment not readily available elsewhere.¹⁶
Congress has also endeavored to create an environment conducive to research
associations between and among public, private, and non-profit entities. Among the
legislative initiatives in this area is the National Cooperative Research Act,¹⁷ which
aimed to encourage companies to undertake joint research through clarifications of
the antitrust laws. The Bayh-Dole Act allowed universities, nonprofit institutions,
and small businesses to obtain title to patents on inventions resulting from
government-funded research.¹⁸ The Stevenson-Wydler Act contained provisions
concerning assignment of title to inventions arising from collaborative work between
federal laboratories and outside cooperating parties where no direct federal funding
is involved.¹⁹ In addition, Congress has provided tax and other incentives to
stimulate joint research projects.²⁰
Although supporters of collaborative research cite its numerous potential
advantages, some observers have voiced concerns over this trend. First,
collaboration may effectively reduce the number of researchers working on a
particular problem. In the manner of an anticompetitive corporate merger, a joint
venture may potentially slow the pace of industrial research.²¹
Second, experience demonstrates that joint ventures may be employed to
facilitate cartels and other collusive behavior. In particular, as a collaborative
research and development project may call for close, continuing cooperation between
two firms, such an arrangement may ultimately decrease the participants’ willingness

¹⁵ See Dreyfuss, supra note 5.
¹⁶ See Mark Stevenson, “Technology Transfer and March-In at the National Institutes of
Health: Introducing Uncertainty Into An Era of Private-Public Partnership,” 50
Administrative Law Review (1998), 515.
¹⁷ P.L. 98-462, 98 Stat. 1815, as amended by the National Cooperative Production
Amendments Act of 1993, P.L. 103-42, 107 Stat. 117.
¹⁸ P.L. 96-517, 94 Stat. 3015. See CRS Report RL32076, The Bayh-Dole Act: Selected
Issues in Patent Policy and the Commercialization of Technology, by Wendy H. Schacht.
¹⁹ P.L. 96-517, 94 Stat. 3019.
²⁰ See Richard S. Markovits, “On the Economic Efficiency of Using Law to Promote
Research and Development: A Critique of Various Tax, Antitrust, Intellectual Property, and
Tort Law Rules and Policy Proposals,” 39 Harvard Journal on Legislation (2002), 63.
²¹ See Richard J. Hoskins, “Antitrust Analysis of Joint Ventures and Competitor
Collaborations: A Primer for the Corporate Lawyer,” 10 University of Miami Business Law
Review (2002), 119.

to act as vigorous rivals in the marketplace.²² Third, joint ventures may reduce
competition by excluding or hampering outsiders from access to technology or other
resources that are essential to participate in a particular market.²³
Finally, some commentators have viewed government support for particular
joint ventures as particularly problematic. Such support has been characterized as
“picking winners and losers” in the marketplace.²⁴ Others believe that the
government has consistently been a poor judge of selecting projects to award with
federal funding.²⁵ Despite these concerns, there can be little doubt that collaborative
efforts form a significant component of research and development projects in the
United States.²⁶
Patent Law Fundamentals
Joint research sometimes leads to technological breakthroughs that in turn may
be subject to patent protection. This report next reviews both the innovation policies
that shape patent law doctrines, as well as the practical workings of the patent system
as applied to collaborative research.
Patents and Innovation Policy
The patent system is intended to promote the production and dissemination of
technological information. Many commentators have argued that the patent system
is necessary to encourage individuals to engage in inventive activity.²⁷ Proponents
of this view reason that, absent a patent system, inventions could easily be duplicated
by free riders, who would have incurred no cost to develop and perfect the
technology involved, and who could thus undersell the original inventor. The
resulting inability of inventors to capitalize on their inventions would lead to an
environment where too few inventions are made. By providing individuals with
exclusive rights in their inventions for a limited time, the patent system allows
inventors to realize the profits from their inventions.
The courts have also suggested that absent a patent law, individuals would favor
maintaining their inventions as trade secrets so that competitors could not exploit

²² See Joseph Kattan, “Antitrust Analysis of Technology Joint Ventures: Allocative
Efficiency and the Rewards of Innovation,” 61 Antitrust Law Journal (1993), 937.
²³ See Joseph F. Brodley, “Joint Ventures and Antitrust Policy,” 95 Harvard Law
Review (1982), 1521.
²⁴ See, e.g., Alan F. Lindsay III, “Tuning Into HDTV: Can Production Joint Ventures
Improve America’s High-Tech Picture?,” 44 University of Miami Law Review (1990), 1159.
²⁵ See Ronald J. Sutherland & Jerry Taylor, “Time to Overhaul Federal Energy R&D,”
Policy Analysis no. 424 (Feb. 7, 2002).
²⁶ See Katttan, supra note 22.
²⁷ E.g., Dan L. Burk & Mark A. Lemley, “Policy Levers in Patent Law,” 89 Virginia Law
Review (2003), 1575.

them.²⁸ Trade secrets do not enrich the collective knowledge of society, however, nor
do they discourage others from engaging in duplicative research. The patent system
attempts to avoid these inefficiencies by requiring inventors to consent to the
disclosure of their inventions in issued patent instruments.²⁹
There are still other explanations for the patent laws. For instance, the Patent
Act of 1952³⁰ is thought by supporters to stimulate technological advancement by
inducing individuals to "invent around" patented technology. Issued patent
instruments may point the way for others to develop improvements, exploit new
markets or discover new applications for the patented technology.³¹ The patent
system may encourage patentees to exploit their proprietary technologies during the
term of the patent. Proponents believe the protection provided by a patent's
proprietary rights increases the likelihood a firm will continue to refine, produce and
market the patented technology.³² Finally, the patent law has been identified as a
facilitator of markets. Absent patent rights, an inventor may have scant tangible
assets to sell or license, and even less ability to police the conduct of a contracting
party. By reducing a licensee's opportunistic possibilities, the patent system lowers
transaction costs and makes technology-based transactions more feasible.³³
The patent system has nonetheless attracted a great number of critics. Some
assert that the patent system is unnecessary due to market forces that already suffice
to create an optimal level of invention. The desire to gain a lead time advantage over
competitors may well provide sufficient inducement to invent without the need for
further incentives.³⁴ Some commentators observe that successful inventors are
sometimes transformed into complacent, established enterprises that use patents to
suppress the innovations of others.³⁵ Others assert that the inventions that have
fueled some of our most dynamic industries, such as early biotechnologies and
computer software, arose at a time when patent rights were unavailable or uncertain.³⁶

²⁸ A “trade secret” is a formula, process, device, or other business information that is kept
confidential in order to maintain an advantage over competitors. See James Pooley, Trade
Secrets § 1.01 (1998).
²⁹ See, e.g., Grant v. Raymond, 31 U.S. 218, 247 (1832).
³⁰ P.L. 82-593, 66 Stat. 792 (codified at Title 35 United States Code).
³¹ See R. Polk Wagner, “Information Wants to Be Free: Intellectual Property and the
Mythology of Control,” 103 Columbia Law Review (2003), 995.
³² F. Scott Kieff, “Property Rights and Property Rules for Commercializing Inventions,” 85
Minnesota Law Review (2004), 697.
³³ See Robert P. Merges, “Intellectual Property and the Costs of Commercial Exchange: A
Review Essay,” 93 Michigan Law Review (1995), 1570.
³⁴ See Frederic M. Scherer & David Ross, Industrial Market Structure and Economic
Performance (Rand McNally & Co., 3d ed. 1990).
³⁵ See Robert P. Merges and Richard R. Nelson, On the Complex Economics of Patent
Scope, 90 Columbia Law Review(1990), 839.
³⁶ See, e.g., Pamela Samuelson, Benson Revisited: The Case Against Patent Protection for
Algorithms and Other Computer Program–Related Inventions, 39 Emory Law Journal
(continued...)

While these various justifications and criticisms have differing degrees of
intuitive appeal, none of them has been empirically validated. No conclusive study
broadly demonstrates that we get more useful inventive activity with patents than we
would without them. The justifications and criticisms of the patent system therefore
remain open to challenge.³⁷
Patent Acquisition and Enforcement
In order to obtain patent protection, innovative individuals and firms must
prepare and submit applications to the U.S. Patent and Trademark Office
(“USPTO”).³⁸ USPTO officials, known as examiners, then assess whether the
application merits the award of a patent.³⁹ The patent acquisition process is
commonly known as “prosecution.”⁴⁰
Under the Patent Act of 1952,⁴¹ a patent application must include a specification
that so completely describes the invention that skilled artisans are able to practice it
without undue experimentation. This requirement is referred to as “enablement.”
The patent specification must also provide information upon the “best mode” known
to the inventor of practicing the invention.⁴²
The Patent Act also requires that applicants draft at least one claim that
particularly points out and distinctly claims the subject matter that they regard as their
invention.⁴³ In practice most patent applications contain multiple claims. Each claim
sets out a distinct proprietary interest that the patent applicant asserts for himself.
While reviewing a submitted application, the examiner will determine whether
the claimed invention fulfills certain substantive standards set by the patent statute.
Two of the most important patentability criteria are novelty and nonobviousness. To
be judged novel, the claimed invention must not be fully anticipated by a prior patent,
publication or other knowledge within the public domain.⁴⁴ The sum of these earlier
materials, which document state-of-the-art knowledge that is accessible to the public,
is termed the “prior art.” To meet the standard of nonobviousness, an invention must

³⁶ (...continued)
(1990), 1025.
³⁷ See CRS Report RL31951, Innovation, Intellectual Property, and Industry Standards, by
John R. Thomas.
³⁸ 35 U.S.C. § 111 (2004).
³⁹ 35 U.S.C. § 131 (2004).
⁴⁰ John R. Thomas, “On Preparatory Texts and Proprietary Technologies: The Place of
Prosecution Histories in Patent Claim Interpretation,” 47 UCLA Law Review (1999), 183.
⁴¹ Act of July 19, 1952, Ch. 950, 66 Stat. 797.
⁴² 35 U.S.C. § 112 ¶ 1 (2004).
⁴³ 35 U.S.C. § 112 ¶ 2 (2004).
⁴⁴ 35 U.S.C. § 102 (2004).

not have been readily within the ordinary skills of a competent artisan based upon the
teachings of the prior art.⁴⁵
Should the USPTO allow the application to issue as a granted patent, the owner
or owners of the patent obtain the right to exclude others from making, using, selling,
offering to sell, or importing into the United States the claimed invention.⁴⁶ Each
inventor named in the patent is presumed to be its owner.⁴⁷ If the patent has multiple
owners, each joint owner is presumed to own an undivided interest in the entire
patent, and each may exploit the patented invention without the need to obtain
permission from any other joint owner. As the Patent Act states:
In the absence of any agreement to the contrary, each of the joint owners of a
patent may make, use, offer to sell, or sell the patented invention in the United
States, or import the patented invention into the United States, without the⁴⁸
consent of and without accounting to the other owners.
This ownership arrangement is formally known as a “tenancy-in-common.”⁴⁹
The term of the patent is ordinarily set at 20 years from the date the patent
application was filed.⁵⁰ Patent title therefore provides inventors with limited periods
of exclusivity in which they may practice their inventions, or license others to do so.
Patent owners bear responsibility for monitoring their competitors to determine
whether they are using the patented invention or not. Patent owners who wish to
compel others to observe their intellectual property rights must usually commence
litigation in the federal district courts. The U.S. Court of Appeals for the Federal
Circuit (“Federal Circuit”) possesses exclusive national jurisdiction over most patent⁵¹
appeals from the district courts, while the U.S. Supreme Court possesses
discretionary authority to review cases decided by the Federal Circuit.⁵²

⁴⁵ 35 U.S.C. § 103 (2004).
⁴⁶ 35 U.S.C. § 271(a) (2004).
⁴⁷ See University Patents, Inc. v. Kligman, 762 F. Supp. 1212, 1218-19 (E.D. Pa. 1991)
("Although 'ownership' and 'inventorship' are not identical for patent law purposes, they are
related. Inventorship provides the starting point for determining ownership of patent rights.
The true and original inventor must be named in the application for a patent and, absent
some effective transfer or obligation to assign the patent rights, the original inventor owns
the right to obtain the patent").
⁴⁸ 35 U.S.C. § 262 (2004).
⁴⁹ See Peter M. Carrozzo, “Tenancies In Antiquity: A Transformation of Concurrent
Ownership for Modern Relationships,” 85 Marquette Law Review (2001), 423.
⁵⁰ 35 U.S.C. § 154(a)(2) (2004).
⁵¹ 28 U.S.C. § 1295(a)(1) (2004).
⁵² 28 U.S.C. §1254(1) (2004).

Federal Legislation Impacting Collaborative
Research and the Patent System
The Patent Law Amendments Act of 1984
Prior to 1984, the patent statutes did not include express provisions that stated
the legal standards for inventorship. This situation resulted in judicial holdings that,
in the view of some observers, were not conducive to collaborative research. For
example, some courts required that an individual contribute to the subject matter of⁵³
each claim within a patent in order to qualify as a joint inventor. Being excluded
from inventorship leads to the result that the individual would also not be considered
an owner of the patent. Before 1984, some commentators believed this result led to
an atmosphere of caution among potential joint researchers.⁵⁴ Under such a rule,
entities that made significant contributions to a research project could nonetheless be
denied the rewards of patent ownership, due merely to imprecisions or strategic⁵⁵
decision-making during the drafting of the patent’s claims.
Concerns also arose that the patent law’s standard of joint inventorship was not
keeping pace with conditions in modern industrial research laboratories. State-of-
the-art research often involves numerous individuals who make different levels of
contribution to a project, sometimes sporadically and over a long period of time.
Some observers believed the requirement that each named inventor make a
contribution to the subject matter of every claim was unrealistic in view of these
industrial conditions. As explained by Gerald J. Mossinghoff, then the
Commissioner of Patents and Trademarks:
Complying with this requirement is sometimes difficult and at times impossible.
Scientists or researchers in an organization often work on a particular aspect or
embodiment of the invention, or on only a portion of the invention, while others
work on different aspects, embodiments or portions. Scientists are continually
added to a research team, while other scientists leave the team. Concepts and
development plans generated through brainstorming cannot always be accurately
attributed. The preparation of patent applications . . . nevertheless requires the
attorney to determine the inventorship of each claim . . . . Adequate protection
for an invention may require the filing of several applications to cover the⁵⁶
separate contributions to all of its aspects.
By enacting the Patent Law Amendments Act of 1984, Congress responded to
both of these issues. As amended by the 1984 legislation, section 116 of the Patent

⁵³ See, e.g., Rival Mfg. Co. v. Dazey Prods. Co., 358 F. Supp. 91, 101 (W.D. Mo. 1973).
⁵⁴ See W. Fritz Fasse, “The Muddy Metaphysics of Joint Inventorship: Cleaning Up After
the 1984 Amendments to 35 U.S.C. § 116,” 5 Harvard Journal of Law and Technology
(1992), 153.
⁵⁵ Id.
⁵⁶ Hearings on H.R. 3285, H.R. 3286, and H.R. 3605 Before the Subcomm. on Courts, Civil
Liberties, and the Administration of Justice of the House Comm. on the Judiciary, 98th
Cong., 2d Sess. 61 (1984) (testimony of Commissioner Mossinghoff).

Act stipulates that individuals may be joint inventors “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.”⁵⁷ This language mirrors that of an earlier judicial
opinion, Monsanto Co. v. Kamp.⁵⁸ In that case the U.S. District Court for the District
of Columbia considered whether the defendants, Kamp and Jahn, had appropriately
been named as inventors on a patent claiming a polyethylene-lined plastic bottle. In
finding the two were properly considered joint inventors, the court explained:
A joint invention is the product of collaboration of the inventive endeavors of
two or more persons working toward the same end and producing an invention
by their aggregate efforts. To constitute a joint invention, it is necessary that
each of the inventors work on the same subject matter and make some
contribution to the inventive thought and to the final result. Each needs to
perform but a part of the task if an invention emerges from all of the steps taken
together. It is not necessary that the entire inventive concept should occur to each
of the joint inventors, or that the two should physically work on the project
together. One may take a step at one time, the other an approach at different
times. One may do more of the experimental work while the other makes
suggestions from time to time. The fact that each of the inventors plays a
different role and that the contribution of one may not be as great as that of
another, does not detract from the fact that the invention is joint, if each makes⁵⁹
some original contribution, though partial, to the final solution of the problem.
The 1984 amendments also provided legislative mechanisms for correcting the
identity of the inventors listed on a patent. Traditionally, the incorrect naming of⁶⁰
inventors had significant consequences for the validity of the patent. Either the
improper addition of a person who was not in fact an inventor, which is termed
“misjoinder” in patent parlance, or the failure to name a correct inventor, which is
termed “nonjoinder,” were strict grounds for patent invalidity.⁶¹
This longstanding patent law doctrine was believed to clash with the needs of
contemporary industry. With the increasingly collaborative nature of research came
larger teams of researchers, which in turn increased the possibility of mistakes in the
identification of inventors. The patent law’s draconian sanction for the misnaming

⁵⁷ 35 U.S.C. § 116 (2004).
⁵⁸ 269 F. Supp. 818 (D.D.C. 1967).
⁵⁹ Id. at 824.
⁶⁰ See, e.g., Pointer v. Six Wheel Corp., 177 F.2d 153, 157, 83 USPQ 43, 47 (9^th Cir. 1949)
(“it has been held repeatedly that a valid patent can only be granted to the real inventor, that
the original and first inventor must make the application, and that, in the case of a patent
which is a joint invention, a patent issued to one only of the inventors is void.”); City of^th
Milwaukee v. Activated Sludge, Inc., 69 F.2d 577, 587, 21 USPQ 69 (7 Cir. 1934) (“When
a number of persons make an invention jointly, a valid patent can not be taken out in the^th
name of one of them.”); Smart v. Wright, 227 F. 84, 87 (8 Cir. 1915) (“the machine was
the result of the joint thought and action of the two men, Wright and Smart. That being the
case, neither of them could secure a valid patent as sole inventor.”).
⁶¹ Pannu v. Iolab Corp., 155 F.3d 1344, 1349-50, 47 USPQ2d 1657, 1662 (Fed. Cir. 1998).

of inventors, coupled with the absence of mechanisms for correcting mistakes, were
believed to be ill-suited for modern conditions.
The Patent Law Amendments Act of 1984 provided a response to this situation
by retaining the rule that identifying the correct inventor or inventors is a condition
of patentability.⁶² However, this legislation allowed for the correction of both
nonjoinder and misjoinder errors.⁶³ As codified in § 256 of the Patent Act, the
USPTO may issue a certificate correcting inventorship so long as these errors arose
without deceptive intent. Section 256 also allows for courts to issue orders requiring
the USPTO to correct the listing of inventors on a particular patent.⁶⁴
The 1984 legislation also amended the definition of “prior art” to exclude
certain “in-house” knowledge–known to members of a collaborative research team
but not to the general public–from qualifying as “prior art” under the Patent Act.⁶⁵
Congress confirmed and slightly broadened this exemption when it enacted the
American Inventors Protection Act of 1999.⁶⁶ Due to this legislation, in-house
information may not be cited against patent applications filed by joint researchers,
at least for purposes of patent law’s nonobviousness requirement.⁶⁷ This provision
is currently codified at § 103(c)(1) of Title 35, United States Code.
A review of the history of this legislation may aid understanding of this rather
technical provision. Congress enacted the 1984 and 1999 statutes in response to the
judicial opinion in In re Bass.⁶⁸ In that case, three joint inventors, Bass, Jenkins, and
Horvat, applied for a patent on an air control system for carding machines. Their
application was rejected because, in the view of the USPTO and the court of appeals,
the invention it claimed would have been obvious in view of the “prior art.”⁶⁹
However, the prior art demonstrating the obviousness of the invention in part

⁶² 35 U.S.C. § 102(f) (2000) (“A person shall be entitled to a patent unless – (f) he did not
himself invent the subject matter sought to be patented . . . .”); 35 U.S.C. § 111 (2000)
(“Application for patent shall be made, or authorized to be made, by the inventor, except as
otherwise provided by this title . . . .”).
⁶³ Patent Law Amendments Act of 1984, P.L. 98-622, 98 Stat. 3383.
⁶⁴ Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997).
⁶⁵ Patent Law Amendments of 1984, P.L. 98–622, § 104, 98 Stat. 3385.
⁶⁶ P.L. 106–113, 113 Stat. 1501 (Nov. 29, 1999).
⁶⁷ Stated in more precise terms, the statute exempts prior art arising from “one or more of
subsections (e), (f), and (g)” of § 102 from consideration in the nonobviousness inquiry
under § 103(a), if certain conditions are met. Specifically, the putative prior art under §
102(e), (f) or (g), as well as the claimed invention, must either be owned by, or subject to
an obligation of assignment to, a single entity at the time the invention was made.
⁶⁸ 474 F.2d 1276 (CCPA 1973).
⁶⁹ As described earlier in this report, the term “prior art” refers to the patent, publications,
and other sources of information that describe state-of-the-art knowledge that is known to
the public. This information is compared to the claimed invention to determine whether the
invention is novel and nonobvious, and therefore eligible for patenting.

consisted of two U.S. patents: one granted to Bass and Horvat, and another issued to
J enkins.⁷⁰
The correspondence of inventor surnames between the application and the prior
art patents was not a coincidence–the prior art patents had been granted to the same
Bass and Horvat, in the one case, and the same Jenkins in the other, as were seeking
the new patent. This meant that these inventors’ own earlier work had been cited
against them to establish obviousness. Ordinarily, the patent statute makes it clear
that an inventor's own prior inventive efforts may not anticipate her own subsequent
patent application.⁷¹ However, the Bass court reasoned that an opposite approach
was permissible because of a traditional patent law principle that treats each new
combination of joint inventors as a distinct “inventive entity.” This rule applies even
where these combinations share individual inventors.
Under the “inventive entity” rule, the team of Bass, Jenkins and Horvat is
considered a different inventive entity than the team of just Bass and Horvat. Each
group of natural persons essentially acquires its own legal identity; they, as a whole,
constitute “the inventor” of that technology. On this view, the two prior art patents
at issue in the Bass litigation were, as matter of legal technicality, the work of a
different “inventor” from the one seeking the present patent, and thus relevant prior
art .⁷²
Concerns arose that the holding in In re Bass was not conducive to joint
research. Large research institutions may employ numerous technologists to engage
in collaborative research and development efforts, and there may be a constant
shifting in the composition of inventive teams working on different projects.
Applying the rule of In re Bass in this setting could lead to a denial of patent rights
even if only a slight change in personnel occurred. In a particularly fertile and
interactive corporate research department, inventors could find themselves unable to
obtain patents due to “in-house” rejections for obviousness based upon efforts by
their peers, and even in part by themselves.⁷³
Congress intended § 103(c)(1) to solve the problem highlighted in In re Bass by
exempting certain prior art from the obviousness analysis in joint research and
development settings. Section 103(c)(1) is a narrowly worded provision, however.

⁷⁰ 474 F.2d at 1287.
⁷¹ There are some exceptions to this basic rule. In particular, if an inventor discloses an
invention through a publication or public use, or places the invention “on sale,” but waits
more than one year to file a patent application, then the inventor’s earlier disclosure will
defeat his prospective patent rights. See 35 U.S.C. § 102(b) (2004). Generally speaking,
however, information in the public domain qualifies as “prior art” only if it is the work of
“another.” See, e.g., 35 U.S.C. § 102(e) (2004).
⁷² 474 F.2d at 1287.
⁷³ See generally Brian P. Murphy, “Oddzon Products and Derivation of Inventions: At Odds
with the Purpose of Section 102(f) of the Patent Act?,” 9 Fordham Intellectual Property,
Media & Entertainment Law Journal(1999), 529; Eric K. Steffe et al., “Biotech
Collaborations and Maximizing Patent Protection: Two Hypotheticals,” 27 American
Intellectual Property Law Association Quarterly Journal (1999), 167.

Generally speaking, if a reference is available not merely in-house, but in fact to the
public at large, then it may still be used to defeat the patent or patent application.⁷⁴
The CREATE Act
The 108^th Congress enacted additional legislation that expanded the existing
exemption for in-house research. The Cooperative Research and Technology
Enhancement (CREATE) Act,⁷⁵ signed by President Bush on December 10, 2004,
was enacted in response to a decision of the Court of Appeals for the Federal Circuit,
Oddzon Products, Inc. v. Just Toys, Inc.⁷⁶ The Oddzon decision held that certain in-
house research, potentially performed by one of a group of collaborative researchers,
constituted prior art and could potentially be patent-defeating.⁷⁷ Congress intended
that the CREATE Act, which was codified at 35 U.S.C. § 103(c)(2) and (3), would
stimulate joint research by eliminating this source of prior art from the
nonobviousness inquiry.
The CREATE Act operates by extending the circumstances under which the 35
U.S.C. § 103(c)(1) exemption applies. In particular, when a claimed invention
resulted from joint research between two or more entities, the CREATE Act excludes
certain prior art developed by one of the researchers from the nonobviousness
analysis if:
^!the claimed invention was made by or on behalf of parties to a joint
research agreement that was in effect on or before the date the
claimed invention was made;
^!the claimed invention was made as a result of activities undertaken
within the scope of the joint research agreement; and
^!the application for patent for the claimed invention discloses or is
amended to disclose the names of the parties to the joint research
agreem ent .⁷⁸
The term “joint research agreement” is defined as “a written contract, grant, or
cooperative agreement entered into by two or more persons or entities for the
performance of experimental, developmental, or research work in the field of the

⁷⁴ Stated in more technical terms, if the prior art qualifies under another paragraph of 35
U.S.C. § 102–for example, under the “printed publication” or “public use” bar of § 102(b)–
then the § 103(c)(1) exemption does not apply.
⁷⁵ Pub. L. 108–453, 118 Stat. 3596 (2004) (“CREATE Act”). See CRS Report RS21882,
Cooperative R&D and the Cooperative Research and Technology Enhancement (CREATE)
Act, by Wendy H. Schacht.
⁷⁶ 122 F.3d 1396 (Fed. Cir. 1997).
⁷⁷ Stated more precisely, the Oddzon decision held that subject matter that qualifies as prior
art only under 35 U.S.C. § 102(f) may be used for purposes of a nonobviousness analysis
under 35 U.S.C. § 103(a). Oddzon, 122 F.3d at 1403.
⁷⁸ 35 U.S.C. §103(c)(2) (2004).

claimed invention.”⁷⁹ The CREATE Act applies to any patent, including a reissue
patent, granted on or after December 10, 2004.⁸⁰
As explained by the House Committee on the Judiciary, “the CREATE Act
provides a simple means of extending the ‘safe harbor’ provisions of current law that
treats inventions of a common owner similarly to inventions made by a single
person.”⁸¹ Under this legislation, inventions generated through collaborative research
are treated as if they were made by a single individual, or subject to an obligation of
assignment to the same individual, if a joint research agreement has been reached
prior to the development of the invention. This legal fiction in turn allows joint
researchers to take advantage of the prior art exemption under Section 103(c)(1) of
the Patent Act.⁸²
Current Issues
Congressional amendments to the Patent Act of 1952 in 1984, 1999, and 2004
have clarified and refined the legal standards governing collaborative research. In the
view of some observers, however, additional concerns exist with respect to the
governing patent law standards. This report considers two of these issues: the
standard of inventorship itself, as well as the property rules regulating joint
ownership of patents.
Standards of Joint Inventorship
The 1984 amendments to the Patent Act stipulated that individuals may be joint
inventors “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.”⁸³ It can be
appreciated that this language offers a negative definition–that is to say, the statute
identifies certain conditions that do not disqualify an individual from being
considered an inventor. But this provision does not affirmatively specify the level
of technical contribution needed to allow an individual to rise to the level of an
inventor, and therefore be named on the patent instrument.⁸⁴

⁷⁹ 35 U.S.C. §103(c)(3) (2004).
⁸⁰ CREATE Act, §3.
⁸¹ U.S. Congress, House of Representatives, House Committee on the Judiciary, Cooperative
Research and Technology Enhancement (CREATE) Act of 2003, House Report 108-425,

108th Cong, 2d sess., Feb. 24, 2004, at 5.

⁸² 35 U.S.C. § 103(c)(1)(2004). Recall that under this provision prior art available only
under paragraphs (e), (f), and (g) of section 102 may be excluded for purposes of
nonobviousness if both the putative prior art and the claimed invention were in fact owned
or subject to an obligation of assignment by one of the joint researchers.
⁸³ 35 U.S.C. § 116 (2004).
⁸⁴ See Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997) (noting that §
(continued...)

Some commentators believe that the lack of an affirmative statutory definition
of inventorship contributes to the difficulties of determining, under certain factual
situations, whether a particular individual qualifies as an inventor. Of course, since
the inventors named on a patent are presumptively its owners, this determination has
very significant practical consequences for collaborative research projects. Suppose,
for example, that two firms each provide one of their employees to work on a joint
research project. Suppose further that the project results in a patented invention, but
only one of the employees is considered to be an inventor that can be named on the
patent. In that situation, unless the two firms have stipulated otherwise via contract,
then only one of the firms will own the patent. If the other firm practices the patented
invention, its former research partner would be able to bring charges of infringement
against it.⁸⁵
Although no specific statutory language defines which individuals may be
considered a joint inventor, a number of judicial opinions concerning inventorship
disputes provide some guidance to industry. Most patent law experts agree that at
least some basic principles regarding joint inventorship are clear from the case law.
As summarized by the Federal Circuit:
All that is required is that the [joint inventor] (1) contribute in some significant
manner to the conception or reduction to practice of the invention; (2) make a
contribution to the claimed invention that is not insignificant in quantity, when
that contribution is measured against the dimension of the full invention, and (3)
do more than merely explain to the real inventors well-known concepts and/or⁸⁶
the current state of the art.
Some examples illustrate this standard. Suppose, for example, that a laboratory
technician merely follows the instructions of a chemist in order to synthesize a new
compound. Because he made no inventive contribution to the project himself, he⁸⁷
would not be judged a joint inventor. On the other hand, suppose that the chemist
had the general idea of the properties of a desirable new compound, but had no idea
how to actually make that compound. Through research, the laboratory technician
develops the new techniques needed to formulate the compound. In such a case, the⁸⁸
chemist and the laboratory technicians would likely be judged joint inventors.
Beyond this basic guidance, however, the determination of contested patent
inventorship has been deemed highly fact specific, with results varying on a case-by-

⁸⁴ (...continued)
116 “sets no explicit lower limit on the quantum or quality of inventive contribution
required for a person to qualify as a joint inventor.”).
⁸⁵ 35 U.S.C. § 271(a) (2004).
⁸⁶ Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).
⁸⁷ See Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976 (Fed. Cir. 1997).
⁸⁸ See Roger E. Schechter & John R. Thomas, Principles of Patent Law § 11.1 (2d. ed 2004).

case basis.⁸⁹ At least one court appears to agree with this assessment. As one trial
court stated:
The exact parameters of what constitutes joint inventorship are quite difficult to
define. It is one of the muddiest concepts in the muddy metaphysics of the patent
law. On the one hand, it is reasonably clear that a person who has merely
followed instructions of another in performing experiments is not a co-inventor
of the object to which those experiments are directed. To claim inventorship is
to claim at least some role in the final conception of that which is sought to be
patented. Perhaps one need not be able to point to a specific component as one's
sole idea, but one must be able to say that without his contribution to the final
conception, it would have been less-less efficient, less simple, less economical,⁹⁰
less something of benefit.
To the extent that these criticisms are accurate, they may have negative
implications for collaborative research. One commentator explains:
Given the minimal and rather vague, thus unpredictable, standards for
determining inventorship, the current state of the law fosters uncertainty and
apprehension regarding the contributions of various researchers or team members
participating in the inventive process. In recent years, a claim of joint
inventorship has become an attractive option for disgruntled scientists suing
either their former research partners or former employers. Likewise, defendants
accused of infringement might endeavor to find an unnamed, overlooked and
minor contributor to defeat a claim of infringement. . . . Thus, the very purpose
of the 1984 amendments has been turned on its ear–refurbished § 116, designed⁹¹
to encourage team research, may now be impeding it.
As a result, some commentators have called for more specific legislative
guidance on the joint inventorship standard. One possible reform would be to
stipulate a clear rule, or possibly a list of factors that courts should consider, with
respect to joint inventorship. This legislation could be based upon such factors as the
amount of contribution made by each putative joint inventor, the relationship
between these individuals, the overall size of the inventive entity, and the
technological field of the invention.⁹²
On the other hand, fashioning a workable standard of joint inventorship might
prove very difficult. Collaborative research occurs between a number of differently
situated actors, including sophisticated multinational enterprises, universities,
government laboratories, and individuals, in a variety of settings.⁹³ As a result,
identifying which individuals deserve to be named as joint inventors may inherently

⁸⁹ See Jerry C. Liu, “Overview of Patent Ownership Considerations in Joint Technology
Development,” 2005 Syracuse Science & Technology Law Reporter, at 1.
⁹⁰ Mueller Brass Co. v. Reading Indus., 352 F. Supp. 1357 (E.D. Pa. 1972), aff’d, 487 F.2d

1395 (3d Cir. 1973).

⁹¹ Matt, supra note 8, at 247-48.
⁹² Id.
⁹³ See John J. Okuley, “Resolution of Inventorship Disputes: Avoiding Litigation Through
Early Evaluation,” 18 Ohio State Journal on Dispute Resolution (2003), 915.

call for a detailed review of the circumstances of individual cases. Articulating a
single rule to govern all of these situations could potentially lead to unjust results in
particular factual settings.⁹⁴
In addition, collaborative researchers possess some ability to protect their
interests in this situation. A joint researcher could, through a contract established in
advance, stipulate that should he not be entitled to be named as an inventor in any
patents that result from a cooperative effort, he is nonetheless entitled to be licensed
or assigned an interest in those patents. As a result, even where a joint researcher is
not entitled to be named as an inventor under the standards established by the patent
law, he could nonetheless enjoy the patent-based rewards that result from a
collaborative project. Given the ability of joint researchers to “contract around” the
patent statute’s inventorship standards, changes to current rules may not be a high
priority for Congress.
Consequences of Joint Ownership
A second point of concern relates to the legal consequences of joint ownership.
As discussed previously, if more than one individual qualifies as an inventor of a
particular patented invention, then these individuals are deemed to be “joint owners”
who hold the patent as “tenants-in-common.”⁹⁵ Under this legal arrangement, each
joint owner owns an undivided interest in the entire property. Further, each joint
owner may exploit the patent without requiring consent from the others.⁹⁶
Suppose, for example, that Firm A and Firm B engaged in a joint research
project. Among the results of that project was a patent that named employees from
both Firm A and Firm B as inventors. In turn, those inventors had previously assigned
their rights in their patented inventions to their employers.
In this hypothetical, Firm A can use the patented invention without regard to
Firm B’s interests, and vice-versa. Neither firm could prevent the other from
exploiting the patented invention, nor could one claim a share of any proceeds that the
other firm earns. Similarly, one firm could freely license or sell its patent rights to
another without interference from the other.
It should be noted that there are two important exceptions to the general rule that
a joint owner of a patent may exploit the patented invention without regard to others.
First, joint owners of a patent can always change their relationship by express

⁹⁴ See John R. Thomas, “Formalism at the Federal Circuit,” 52 American University Law
Review (2003), 771.
⁹⁵ See supra notes 42-44 and accompanying text.
⁹⁶ As provided in 35 U.S.C. § 262 (2004):
In the absence of any agreement to the contrary, each of the joint owners of a
patent may make, use, offer, to sell, or sell the patented invention in the United
States, or import the patented invention into the United States, without the
consent of and without accounting to the other owners.

agreement. The tenancy-in-common arrangement applies only as a default in the
event the owners have not ordered their affairs otherwise, through contract.⁹⁷
In addition, joint owners of a patent are required to cooperate before bringing a
patent infringement suit in federal court. 35 U.S.C. § 281 states that “A patentee shall
have remedy by civil action for infringement of his patent.”⁹⁸ Courts have interpreted
this language as requiring the agreement of each of a patent’s joint owners in order to
enforce the patent through infringement litigation. Therefore, although one joint
owner can manufacture, sell, license or otherwise exploit a patented invention without
regard to the other joint owners, permission of the other joint owners must be had
prior to commencing an infringement suit.
In light of the usual rule governing a tenancy-in-common relationship, however,
some commentators have observed that joint owners of a patent are at each other’s
mercy.⁹⁹ The policy basis for this rule appears to be premised upon creating the
maximum opportunity for the patented technology to be exploited in the
marketplace.¹⁰⁰ For example, suppose that three different individuals are joint owners
of a patent. Under the default rule established by the patent statute, anyone who
wishes to sell the patented invention need only obtain a license from any one of the
owners. If the rule were otherwise, procuring a license from all three owners might
be more costly and difficult. The tenancy-in-common relationship also prevents one
of many joint owners from a patent from “holding up” the entire transaction by
demanding additional royalties or other consideration.¹⁰¹
Some commentators believe that the tenancy-in-common rule may lead to some
unjust outcomes in joint research settings, however.¹⁰² Following 1984 amendments
to the patent statute, an individual may be named as an inventor even though he did
not make the same type or amount of contribution as other inventors, or he did not
make a contribution to the subject matter of every claim of the patent.¹⁰³ However,
once an individual is a named inventor on a patent, he is deemed to be a joint owner
of the entire patent instrument. These circumstances may cause him to be considered
an owner of many claims to which he made no contribution.

⁹⁷ See Schechter & Thomas, supra note 88, at § 11.1.
⁹⁸ 35 U.S.C. § 281 (2004).
⁹⁹ See Cilco, Inc. v. Copeland Intralenses, Inc., 614 F. Supp. 431, 434, 227 USPQ 168, 170
(S.D.N.Y. 1985) (“[C]o-owners [of a patent] are considered to have opposing interests. Each
is at the mercy of the other.”).
¹⁰⁰ See Merges & Locke, supra note 10.
¹⁰¹ See Robert P. Merges, “The Law and Economics of Employee Inventions,” 13 Harvard
Journal of Law and Technology (1999), 1.
¹⁰² See Konecny, supra note 11.
¹⁰³ 35 U.S.C. § 116 (2004).

This scenario was brought to light by a 1998 decision of the Court of Appeals for
the Federal Circuit, Ethicon, Inc. v. United States Surgical Corp.¹⁰⁴ Here, a Dr. Yoon
was named as the inventor of a patent relating to surgical tools. Along with his
licensee, Ethicon, Yoon brought an infringement suit against U.S. Surgical. U.S.
Surgical subsequently learned that Choi, an electronics technician, had collaborated
with Yoon and made some contributions to the patented invention. U.S. Surgical then
promptly obtained a license from Choi and then asked the court to name Choi as a co-
inventor of the patent-in-suit. Due to this license, if Choi qualified as a co-inventor,
U.S. Surgical would be considered an authorized licensee and be able to preempt the
lawsuit altogether.
U.S. Surgical’s strategy ultimately proved successful. The district judge ruled
that Choi was a co-inventor of two of the 55 claims of the patent-in-suit and therefore
was a joint owner of the entire patent.¹⁰⁵ Following an appeal, the Federal Circuit
affirmed. The Court of Appeals cited a number of circumstantial factors that
supported the conclusion that Choi had contributed to two of the asserted patent’s
claims. Among other factors, Yoon's need for a person with electronics expertise, the
length of time they worked together, the absence of pay to Choi, and the similarity
between the diagrams in the patent and the drawings in Choi’s notebook each
suggested that Yoon and Choi should be considered joint inventors.¹⁰⁶
One of the Federal Circuit judges, Judge Pauline Newman, issued a dissenting
opinion in the case. Her opinion expressed concern that Choi, who had been shown
to have made a contribution to only two of the 55 claims of the patent-in-suit, was
now deemed an owner of the entire patent. Judge Newman observed that prior to the
1984 amendments to 35 U.S.C. § 116, Choi would not have been considered a joint
inventor because he had not contributed to each of the patent’s claims. She
interpreted § 116 as merely permitting the naming of additional persons as inventors
on a patent instrument.
Judge Newman further explained that being named as an inventor should not
necessarily result in full status as a co-owner because the concepts of joint
inventorship and joint ownership are conceptually distinct. In her view, ownership
rights in a patent are based on the notion that both inventors had shared equally in
developing the invention. In such circumstances, a “joint tenancy” system where each
inventor owns an undivided share of the entire patent is appropriate. According to
Judge Newman, given the 1984 changes to the law of joint inventorship, the law of
joint patent ownership deserved reassessment.¹⁰⁷
Subsequent commentary has largely been sympathetic to the views of the
dissenting opinion in Ethicon v. U.S. Surgical. Some observers believe that it is
inappropriate to “transpose pre-1984 concepts of joint ownership into the new post-

¹⁰⁴ 135 F.3d 1456 (Fed. Cir. 1998).
¹⁰⁵ 954 F. Supp. 51 (D. Conn. 1997).
¹⁰⁶ 135 F.3d at 1464.
¹⁰⁷ Id. at 1468.

1984 inventorship law . . . .”¹⁰⁸ In particular, a broad conception of joint inventorship,

in combination with a tenancy-in-common ownership paradigm, may allow a joint
inventor to enjoy economic rewards that are not commensurate with his contribution
to the patent. Believing that this situation “frustrates the purpose of patent law,”
observers have called for legislative reforms so that courts can “fashion more
equitable and economically efficient” distributions of patent-based rewards.¹⁰⁹
A number of alternatives to the patent law’s current tenancy-in-common rules
exist. In the copyright law, for example, each joint owner of a copyrighted work is
free to exercise any of the rights of a copyright owner without the permission of the
other joint owners, and may also license others to exercise those rights as well.
However, each joint owner must pay a proportional share of any profits she realizes
to the other owners.¹¹⁰ In theory, a similar arrangement could be dictated for joint
patent owners as well.
Another possibility would be to consider ownership issues on a claim-by-claim
basis, rather than a patent-by-patent basis. Put differently, courts could determine
whether a putative joint inventor contributed to the subject matter of the specific claim
at issue in a particular litigation. This approach would contrast with the current law,
which inquires whether the putative inventor made a contribution to any one of the
claims in the asserted patent.¹¹¹
Yet another approach would be to attempt to apportion each owner’s interest in
a patent based upon the extent of his technical contribution to the claimed subject
matter. Current law awards each joint owner an equal interest in the patent. It would
be theoretically possible for courts to make more particularized determinations of the
relative merits of each inventor’s contribution. This rule could result, for example,
in one joint owner being awarded a 70% share in the patent, while the other joint
owner received a 30% share.
Other patent ownership arrangements, similar to those discussed above, may be
possible.¹¹² In weighing the desirability of any alternative to the current regime, one
factor to be considered is ease of judicial administration. To the extent that these
proposals would involve more difficult determinations than the current tenancy-in-
common standard, they are likely to increase the complexity and uncertainty of patent
litigation.¹¹³ Another concern may be diminution of the incentives of one joint owner
to commercialize the patented invention. Even if one joint owner does not require the
permission of others to exploit a patented invention in the marketplace, her incentives

¹⁰⁸ Tigran Guledjian, “Teaching the Federal Circuit New Tricks: Updating the Law of Joint
Inventorship in Patents,” 32 Loyola of Los Angeles Law Review (1999), 1273.
¹⁰⁹ See, e.g., Konecny, supra note 11, at 176.
¹¹⁰ Schechter & Thomas, supra note 88, at § 6.3.
¹¹¹ See Steffe et al., supra note 73, at 149.
¹¹² See Rivka Monheit, “The Importance of Correct Inventorship,” 7 Journal of Intellectual
Property Law (1999), 191.
¹¹³ See Matt, supra note 8.

to do so may be diminished if she must pay a share of her profits to the other joint
owners.¹¹⁴
In addition, the patent statute’s tenancy-in-common relationship is effectively a
default rule. Under current law, firms may account for any perceived shortcomings
of the tenancy-in-common principle by reaching an agreement in advance that
stipulates an alternative ownership relationship. As with the patent statute’s standards
for joint inventorship,¹¹⁵ the established ability of collaborative researchers to
“contract around” the patent statute may suggest that legal reform in this area is not
a compelling need.
Concluding Observations
Although amendments to the patent statute have clarified rules pertaining to
cooperative research and development endeavors, concerns about the standards of
joint inventorship and joint ownership persist. These topics represent relatively
technical aspects of the patent law. They are nonetheless subjects that have been the
subject of legislative reform over the past two decades, and that are of undoubted^th
importance to collaborative research. Although legislation currently before the 109
Congress proposes many reforms to the patent statute,¹¹⁶ this proposal would retain
rather than refine existing rules with respect to joint inventorship and joint ownership.
As technologies and markets continue to advance, striking a balance between
encouraging cooperation among researchers, while maintaining sufficient patent-based
exclusivities to encourage innovation in the first instance, will continue to be in the
public interest.

¹¹⁴ See Merges & Locke, supra note 10.
¹¹⁵ See supra note 94 and accompanying text.
¹¹⁶ H.R. 2795, Patent Act of 2005.