IP rights and innovation: Connecting the dots between inventions and IP 

Intellectual property (IP) rights play a vital role in helping inventors protect and defend the names of products or services (trademarks), the aesthetic aspects of creations (designs) and the innovations themselves (patents). In this short guide, Matthieu Boulard examines the intersection between IP rights and the process of innovation – and answers frequently asked questions about patent and inventor activities, including “What is an invention?” and “Who is an inventor?” 

What is an invention, and is anyone with an idea an inventor? To answer these questions, it is first necessary to determine what an "invention" and “inventors” are from an IP perspective, since the terms refer to a legal concept. 

The legal concept of invention and inventors 

The legal definition of an invention and inventor is vital from an IP standpoint, as it not only confers a set of rights and obligations but, as importantly, those rights and obligations will be lost if there is an error in the patent record. 

What is an invention? 

An invention is a technical solution to a technical problem, which meets three key criteria: 

• It is new (novel),  
• It involves an inventive step, and  
• It can be applied industrially. 

The act of inventing consists of solving a problem by transforming a non-obvious idea into a realisation of that idea. Although the starting point is the birth of an idea, the determining element is the technical implementation of this idea to generate an achievement, whether it is a product (physical entity) or a process.  

This achievement is considered successful when it is suitable for testing and used to solve a problem. This means that an invention is realised only if the inventor can disclose the principles that allow a third party to recreate it without extensive research or experimentation. Suggesting an idea as to the result to be accomplished without offering solutions for its implementation is not an invention. Simply put, you cannot "patent an idea". 

Who is an inventor? 

An inventor is a person who has contributed to an essential element of the invention, as claimed. That person is not considered an inventor if they simply suggested the idea (without offering solutions for its implementation). Likewise, an inventor can request information or opinions from competent third parties without them becoming co-inventors.  

Even if an individual has suggested modifications or adjustments to the invention, they will not achieve the status of (co-)inventor if such modifications or clarifications are obvious to a person skilled in the art in that field. The same applies if a person solely undertakes experiments without making a tangible contribution. 

An inventor may be an employee or self-employed. Whether their inventions belong to them or their employer/contracting party depends on the specifics of the invention and their employment/contract terms. 

What is an inventor’s role? 

Typically, inventors will be involved throughout the lifecycle of the invention, including: 

• Defining patentability studies 

These studies make it possible to determine whether it is appropriate to file a patent application and to assess the chances of grant.  

To carry out such a study, a prior art search on public and private databases is carried out, and the relevant documents close to the invention are analysed. 

The inventor, through their expertise, helps to define the framework of the research and confirm the hypotheses necessary for the analysis (equivalence between elements of a device, conversion of numerical data, additional information on the technical field, etc). 

• Drafting patent applications 

Responsibility for drafting patent applications sits with qualified patent attorneys; however, the inventor should be involved due to their knowledge of the invention. 

Patent applications include: 

• the technical field of the invention and its industrial application,  
• prior art,  
• the technical problem to be solved and the solution provided by the invention,  
• a detailed description of at least one embodiment of the invention, 
• a set of demands, 
• possibly figures with brief descriptions. 

During the drafting process, the inventor will (help) confirm the set of claims, i.e. the scope of protection of the patent application. This makes it possible to exclude any claims that do not work or to omit an essential element of the invention. 

The inventor may also help with the writing of the text itself, verifying all the information relating to the implementation of the invention, the definitions and the accuracy of the test results. 

• Patent prosecution 

During the process of obtaining a patent, the relevant IP offices issue search reports and notifications to verify that the invention is eligible for patent protection (as seen above: novelty, inventive step and capable of industrial application). 

The inventor may be called upon to assist in the understanding of a prior art document, therefore, or to provide a more detailed explanation of a technical point or supply additional data to help the examiner better understand the invention. 

• Patent grant 

Once a patent is obtained, it gives the owner the right to prohibit a third party from reproducing the protected invention. The application of this right may be the subject of disputes, such as an infringement action by the holder against a third party or an action for invalidity by a third party against the holder. 

The inventor may be asked to help verify the relevance of the opposing party's arguments or to provide additional data. The objective is to allow the holder to maintain their patent in force and/or to have all the elements to enforce their rights. 

• Freedom-to-operate studies 

Freedom-to-operate (FTO) studies are in-depth examinations in a specific territory (e.g. France) to determine whether an invention can be exploited without infringing prior patent rights held by third parties. 

To carry out an FTO study, a prior art search on public and private databases will be carried out, and the relevant documents close to the invention will be analysed. By virtue of their expertise in the technical field, the inventor can help compare those patent documents with the protected invention.  

Inventor rights and obligations 

IP rights are territorial by nature, so the rights and obligations imposed on inventors will vary between jurisdictions, depending on where the IP is filed. For this reason, it is recommended to work with a qualified IP attorney in your jurisdiction who can advise you in specific detail on the general points covered below.  

• Rights of an inventor 

Inventors (including employee inventors) have specific rights, according to the legal framework in their jurisdiction. This can include: 

• Right to information, e.g., the right to be informed of any application for an IP title or any grant of an IP title. 
• Right to renounce the designation of inventor, i.e., the right to object to the publication of their name on the patent application and/or on the patent. This right is intended to protect inventors who do not wish to be associated with their invention. 
• Right to remuneration, e.g., in France, the law provides for "additional remuneration" or a “fair price” in the context of inventions created in the course of employment or during employment but outside the scope of their role. 
   
• Obligations of an inventor 

Inventors (including employee inventors) have specific obligations, according to the legal framework in their jurisdiction. This can include: 

• Invention disclosure: The employee must immediately inform the employer by providing sufficient information to enable the employer to assess the invention (and classify it under the three categories of employee invention). 
• IP rights and innovation creation: As covered above, the inventor must help enhance the IP rights of the employer. This involves patentability or freedom to operate studies, as well as obtaining a patent and maintaining it in force. 
• Respect for confidentiality: An inventor must not communicate about the invention without the agreement of their employer. 

What happens if a mistake is made when crediting an inventor? 

Any errors made when crediting or naming inventors as part of a patent application can lead to consequences further down the line. 

Potential consequences include: 

• Increased procedural costs: While errors can be corrected (see below), it should be noted that resolving a naming error can be very costly. Depending on the progress of the application, it may be necessary to correct the error at several patent offices around the world and to involve several IP advisers. 
• Incorrect estimate of each inventor's contribution: Depending on the jurisdiction, the contribution of each inventor must be considered to estimate the percentage contribution of each inventor. The incorrect addition of an individual reduces the amount received by each of the real contributors, therefore. 
• Invalidation of a patent application or patent: Some IP offices consider that an error in the list of inventors constitutes a violation of the duty of transparency, in that it constitutes a lie to an authority. This is the case, for example, in the United States. Intentionally omitting the name of a person who is an inventor or knowingly identifying as an inventor a person who merely collaborated in research or is the operational head of an entity may result in the invalidation of a patent as a result. 

Solutions to correct errors 

To correct the designation of an inventor: 

• The agreement of the patent application or patent holder is generally required to add an inventor (another option is the production of a final decision recognising the right to designation; i.e., the agreement of a judge); 
• To remove an inventor, the agreement of the wrongly named person is also required. Therefore, removing an incorrectly named individual may be difficult if they refuse to acknowledge that they are not an inventor of an IP property (in the strict legal definition, see above), or if they are simply unreachable.  
• If the person cannot be reached or is unable to provide a signature, it is necessary to provide evidence of this fact (testimonies, results of investigation, medical certificate, death certificate, etc.). This is a long and expensive process.  
• Where the inventor is not an employee of the applicant (external collaborator, doctoral student, etc.), signing a transfer contract (assignment) may be necessary.  

Given the conditions for the withdrawal of a designation, it cannot be underemphasised how important it is to have a telephone number, an email address and/or a postal address for each inventor. 

How Novagraaf can assist  

Given the complexities of the IP system, it’s recommended to work with a qualified IP attorney in your country or countries of operation.  

Novagraaf’s Europe-wide presence enables us to provide dedicated support to patent holders seeking to protect and enforce their IP rights in the region. We specialise in offering personalised advice to determine the most effective patent protection strategy for your business, including supporting inventors and their employers throughout the IP creation process. 

Contact us today to learn more about IP rights and innovation hot topics, including how our services can protect your innovations. 

Matthieu Boulard is a Patent Attorney based at Novagraaf in Paris.