Determining inventorship is answering the question: who
contributed enough to an invention to be named as an
"inventor" on the patent application? It's critical,
as reviewed by my colleague Shohini Bagchee in her article Whose Invention Is It
Anyway? – Some Thoughts on Patent
Inventorship and Ownership.
Although the US case Ethicon Inc. v. U.S. Surgical Corp.
(135 F.3d 1456) is not a new decision, it's worth
reviewing since it neatly illustrates the troubles that can
arise. In Ethicon, a first inventor, Dr. Yoon,
obtained a patent covering a certain surgical device. The
patent contained 55 claims. Yoon granted a license to
Ethicon. On the stregth of this license, Ethicon turned around and
sued its competitor U.S. Surgical for infringing two of the claims
in the Yoon patent. U.S. Surgical in the course of preparing its
defence found that Mr. Choi had contributed to the invention and he
should have been named as co-inventor on the Yoon patent.
