Intellectual Property and Collaborative Research

Publication Date: August 2005

Publisher: Library of Congress. Congressional Research Service

Author(s):

Research Area: Law and ethics

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Abstract:

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 "tenancyin-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 rules­such as considering ownership on a claim-by-claim, rather than a patent-by-patent basis­are 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.