Cross-Border Inventing

by Dennis Crouch

The chart below highlights an important trend in patenting: increased joint-inventorship where the inventors reside in different countries.  The top (blue-circle) series looks generally at cross-border joint-inventing while the lower (orange-square) series reports a subset where at least one of the inventors has a US residence.

One important caveat here is that the inventor’s permanent residence does not necessarily mean that the inventors where physically distant since one or more inventors may have been temporarily on location.  Further, residence is typically designated at the time the patent application is filed, and inventors may have moved in the interim between inventing and their US filing.  The rise in cross-border inventing also correlates with the rise in joint inventorship.  From 2005 to 2022, the average number of inventors per patent rose from 2.5 up to over 3.   If we reach back to 1985, most US patents listed only one inventor. By 2005, only 37% of utility patents were single inventor endeavors.  Today, the figure is down to 26%.

 

25 thoughts on “Cross-Border Inventing

  1. 6

    The slope of the graph surely comes as no surprise to anybody here, right? What interests me is that different jurisdictions have different notions about who to name, and different sanctions for naming too many or too few persons as inventor.

    The number of litigations where this issue is determinative must be, up to now, vanishingly small. But it will inevitably grow, won’t it?

    One thing’s for sure, the days are surely gone, when an employer would offer you, as a “perk”, your name on a patent as co-inventor, or a research director would require you to add their name as an inventor.

    1. 6.1

      What interests me is that different jurisdictions have… different sanctions for naming too many or too few…

      Well let’s see just how interested you are: please answer what are the sanctions in the US Sovereign post AIA?

      Bonus: what aspect was deleted from US law not only in relation to this topic, but wherever the phrase had appeared?

      1. 6.1.1

        Anon is obscurely referring to the AIA elimination of the words “and such error arose without any deceptive intention on his part” from the from the “Correction of named inventor” statute 35 USC 256. But I do not recall seeing any decision where that has made any difference?

        1. 6.1.1.1

          I am also referencing the change in penalty for improper naming of inventors, Paul.

          But that was a (quick and easy) test for MaxDrei to verify his asserted interest.

          We all see just how much interest he actually had:

          Nada.

    2. 6.2

      The number of litigations where this issue is determinative must be, up to now, vanishingly small. But it will inevitably grow, won’t it?

      Maybe. Consider me skeptical. (1) The largest single forum for U.S. patent litigation is the PTAB, but inventorship issues are not part of their subject matter jurisdiction. (2) The purpose of the pre-trial process in district court is to narrow and focus the number of issues that you bring to trial, so as not to waste the jurors’ time litigating issues that are not critical to the outcome. If you have 18 killer arguments, the judge is not going to let you bring all 18 to a jury. You are going to have to pick.

      Even in a world with growing lists of inventors, it will still probably remain the case that when a defendant looks at the list of defenses that they can put to a jury, they will say to themselves “this enablement issue is easier to explain to a jury” or “this on-sale issue is easier to explain to a jury” than “this inventorship issue is easier to explain.” Moreover, what matters in court is not what happened, but what you can prove happened. It is just inherently harder to find clear and convincing inventorship evidence than to find clear and convincing (e.g.) obviousness evidence, or on-sale evidence. Basically, you need to get inventors or teammates of inventors to dish dirt on each other. Not impossible, but not always easy either (especially by the time frame at which the defense is being raised).

      1. 6.2.1

        I had in mind cases like the one between USSC and Ethicon, or when an employer dispenses with the services of a hitherto loyal and creative employee, who is then able to adduce relevant evidence, is motivated to do so, and has a sponsor. Did Twitter ever file patent applications?

        1. 6.2.1.1

          So I see the actual level of your interest there MaxDrei (not unexpected).

      2. 6.2.2

        Those are good practical reasons why incorrect inventorship does not often get challenged in the PTO, or noted in reported patent litigation as a successful invalidity defense.
        However, also as a practical matter, if there are, as reported, more joint inventors from different countries, the patent attorney preparing the application in one country will have more difficulty making proper inventorship determinations. [And rarely provided with a travel budget to do so.]

        1. 6.2.2.1

          Why in the world would a travel budget be required?

          As I noted in relation to understanding just who the client is, the level of detail “you are after” is rarely something the client has requested.

        2. 6.2.2.2

          So instead of answering, you v0m1t a snide comment above…

          Man, your distance from the days when you actually were active in prosecution matters is really showing, Paul.

        3. 6.2.2.3

          Perhaps the point is that a definitive fixation of the individuals to be named as inventor is of trivial import compared with the vital necessity to fix matters of ownership before filing the patent application.

          If the only names that come in for consideration are employees who are contracted to assign ownership, for example, how much does it matter (except in jurisdictions like UK, Germany and Japan with their employee-inventor compensation/ownership reversion regimes) whether too many or too few individuals are named?

          Conversely, if an outside contractor was involved in the development of patentable matter, the patent attorney might need to burrow a bit deeper. One or two video meetings, perhaps?

    3. 6.3

      “But it will inevitably grow, won’t it?”

      It’s hard to say, but sometimes peaks of sorts happen in litigation, for example if enough were to suddenly look into the issue more closely and bring up more cases, and they turned out fruitful, challenging inventorship might see a big blip upward for a short while. But, I can ask too, why hasn’t such a blip occurred yet ? Has everybody missed “the big opportunity”? I harbor doubt on that. As another writer pointed out, prioritization of issues. Maybe “if grasping for straws, don’t leave out theinventorship straw”

  2. 5

    I don’t think the corporate US issues patents to all sorts of persons in any discriminant way. So I was wondering why you’d think it interesting to seeing another line for NON-Multinationals / Foreign Entities ? The entities which the US issues patents to, are all foreign with respect to the DC corp, whethere they’re us-domiciled or situs’d in Mexico. What would be interesting about a second line ?

    1. 5.1

      The interest has to do with the effects of being “beholden” as a citizen of the Sovereign, in contrast to the flexibility that transnationals have.

      This is tied to the notion that corporations “have a voice” per the Citizens United case, but the legal fiction of corporate personhood generates an uneven playing field due to the nature of (especially for transnationals) corporations.

  3. 4

    Its tough to draw conclusions on these sorts of data, for me at least, since there’s so many factors. Its like “dry skin” can have so many different causes, same with inventorship diversity, but it can probably be correlated with AIA if one border collies’ up the numbers.

    What I’ve observed as potential fun are these patents many have seen, which list like… 8 inventors and when you look at the claims, ya wonder … there’s no way if these ppl were grilled, that 8 inventors are behind that claim !! Its a weak spot of patents, having larger numers of inventors means the lawyer writing the case better make well darn sure they have it documented, each inventors contribution to the claims !! Lots of ’em out there that won’t stand up to scrutiny without question !

    1. 4.1

      In the pharma space, especially with small molecule patents, its easy to see how eight or more people can be listed as inventors. It’s not uncommon for teams of scientists to have that many people, and (quite often) there is some flexibility for each member as to exactly what molecules they make. There will be a general structural skeleton (the genus), but the exact molecules (the species) may be more flexible. Also, the structural skeleton may have originated in a computational group and then refined by the synthesis group, so that would add even more people to the list of inventors.

      1. 4.1.1

        “Listed as inventor” vs. actually contributing to a claim. I’m just sharing experiences, others’ may vary. Sometimes these groups of inventors think its a buddy-buddy thing, to just list everyone in the group as “inventor”. I was the one who took it higher and said “Mr. VP, did you know that a patent can be deemed invalid for incorrect inventorship ?” Of course most VP’s then knew nothing of the tests for inventorship. So at the end of the day, after a reasonable, inventors C, F, and Q are eliminated from the inventor list. Sometimes ppl get sad over that sort of thing, but they get over it once they understand how critically important it is to get inventorship correct. With large numbers of inventors listed, one almost MUST make a chart of each inventor and put their contribution on the chart. Then, 10 years later, if inventorship is challenged, yu’ve got it at your fingertips. Forget about scrounging the inventors’ contributions 10 years later, often the inventors have moved on or passed, I think one has to document clearly each inventor’s contribution while the iron is hot. The last thing I’d want is some witness to have to admit, “oh, by that definition, no I’m not an inventor”.
        It’s happened ! Main point… the more inventors listed, increases the probability that at least one should have not been listed as inventor. Hah, I had one small molecule case where an MD researcher clearly invented claims 22 -26, so I listed him as co-inventor. The CEO head honcho was the primary inventor, and he demanded I NOT list the MD, that the CEO wanted to be sole inventor. I explained everything, he dug his heels in, and I withdrew from the case, cuz I won’t knowingly file anything with incorrect inventor ship !! I know lots of ya all know what I’m talking about :”)

        1. 4.1.1.1

          That’s an interesting personal story (which would help explain your ‘sense of tracking’).

          That being said, easily 99% of the time, there is no such tracking of inventors to claims.

          I would add that the detail of inventor-to-claim may be somewhat eased in cases of more detailed specifications, with multiple planned potential fall-backs and/or continuations in mind.

          1. 4.1.1.1.1

            Yeah its a huge potential minefield. It can happen very easily where some inventor themself had acted merely as a pair of hands under direction of another named inventor, but the drone was named as inventor out of courtesy. There’s no problem unless it comes up of course but there’ve been cases also where inventorship is raised after a falling-out btw partners, etc. and things can really xplod. I’ve always been a little surprised we don’t see more cases where inventorship is at issue. Possibly, the rel. number of patents having large numbers of inventors is “small” and of that small subset only a tiny fract. get litigated. I always h*ted this part where ya get to be the bad guy.

            1. 4.1.1.1.1.1

              From my vantage point, the relative number of cases tends to the minimal simply as a matter of thorough lawyering.

              Knowing exactly who the client is (and for us, this is predominantly — although not exclusively — the corporate entity as opposed to the real persons of the inventors) — as well as being clear with the inventors through the application preparation process (and in those minimal cases of real persons as inventors being the client, through prosecution) certainly helps. Also, very early in the process having all assignments in order does eliminate a substantial portion of potential risk.

              Further, we rarely (if ever) go to the length of tracking inventor to particular inventive concept. Certainly the client could pay us for that level of work, but they usually choose not to do so. When all assignments are in order, again, the risk is fairly de minimus.

  4. 3

    Very interesting. Thanks for sharing these, Prof. C.

  5. 2

    Also, inventor residence alone may well be ‘adjusted’ by examination of an immediate assignee.

    Quite in fact, while most all application prep involves dialogue with inventors, it is important to note that our clients are almost exclusively NOT those inventors.

  6. 1

    Would be interesting to see another line for NON-Multinationals/Foreign Entities.

    1. 1.1

      But, the United States is a foreign corporation w/respect to the several states of the Union, so where do Texans fit in (the term includes also spiritual Texans) ? All patents issued by the DC corporation, were issued to individuals residing in different States, for a long time…. 🙂 word fun 🙂

      1. 1.1.1

        Well Chrissy, had patents not been an item at law only at the Federal level, your musing here might have made it to be beyond just being silly.

        Alas…

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