My Patent, Your Patent, or Our Patent? Inventorship Disputes Within Academic Research Groups

44 Pages Posted: 1 Apr 2007

See all articles by Sean B. Seymore

Sean B. Seymore

University of Notre Dame - Notre Dame Law School

Abstract

The statutory requirement of identifying the first and true inventor is often muddled by the mores and practices of academic science. Unfortunately, and despite claims of scientists and attorneys to the contrary, I contend that the inventive entity is not discovered but rather determined in and through social relationships. Although universities should always strive to promulgate policies which fully comport with the law, the biggest incentive for universities to insist on correct inventorship is financial. I argue that the rise in mentee claims for sole or joint inventorship, as well as the ever-present threat of an inequitable conduct defense in a patent infringement suit, jeopardizes the ability of the university to generate royalties from licensing agreements. To protect this revenue stream, I contend that universities must revisit their “hands off” approach to the inner workings of the academic research group, at least with respect to determining the correct inventorship for a patent application.

Keywords: patent, university, inventorship, authorship, technology transfer, research

JEL Classification: O34, K41, K19

Suggested Citation

Seymore, Sean B., My Patent, Your Patent, or Our Patent? Inventorship Disputes Within Academic Research Groups. Albany Law Journal of Science and Technology, Vol. 16, pp. 125-167, 2006, Available at SSRN: https://ssrn.com/abstract=976397

Sean B. Seymore (Contact Author)

University of Notre Dame - Notre Dame Law School ( email )

Eck Hall of Law
Notre Dame, IN 46556
United States

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