William Honaker

Careless naming of inventors on a patent application can create confusion and add complexity to an already intricate process. The recent case of Blue Gentian, LLC v. Tristar Prod., Inc. is a great example where failure to properly list a co-inventor resulted in the only named inventor losing their patent rights…. To avoid a case similar to Blue Gentian v. Tristar, identify all inventors carefully and have them sign an assignment agreement, which transfers their rights to a single entity, such as an individual or the company that’s going to exploit the patent.

In the winter of 2014, Leah Bassett rented her Martha’s Vineyard home to Joshua Spafford. He seemed like a nice guy, quiet and well-dressed. Joshua listed his employer as “Mile High Media.” Mile High then used the home to shoot several adult videos. Leah, the homeowner, didn’t know that they were going to use her home in this way. She was upset when she learned what they had done, but in the end, she got her revenge thanks to copyright law.

The National Institutes of Health (NIH) is at legal odds with Moderna, claiming that Moderna neglected to add three NIH scientists to Moderna’s patent application on a principal COVID-19 vaccine. If a court ends up siding with NIH, it would co-own any issued patents on the technology, which could prove to be quite valuable; in 2021, Moderna’s vaccine sales were forecasted to be in the range of $15 billion and $18 billion. With an equal undivided interest in the patent, NIH could do whatever it wishes with it, such as licensing it to others and collecting royalties.

Creative people need a quick, efficient and inexpensive way to recover damages for copyright infringement. They need a place to submit their charge of infringement and collect damages. Until recently, their only option was to bring a lawsuit in a federal district court; a process that is complicated, expensive and time-consuming. The Copyright Alternative in Small Claims Enforcement Act of 2020 (CASE Act) gives them another option, but it is problematic. It is also a problem for small businesses, which are at a disadvantage because the act benefits copyright trolls. It creates a new efficient vehicle for copyright trolls to prey on your clients.

Naming the correct inventors is critical when drafting a U.S. patent. Patents must have all inventors properly named. Deciding who is an inventor is a complicated task and great care must be taken to not add or omit people who are not inventors. It is possible that failure to properly name the inventors could result in losing your patent or its value. If inventors have been improperly added or omitted, the patent must be corrected or it could be declared invalid.