Intellectual Property and Collaborative Research (CRS Report for Congress)
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| Release Date |
Aug. 16, 2005 |
| Report Number |
RL33063 |
| Report Type |
Report |
| Authors |
John R. Thomas, Resources, Science, and Industry Division |
| Source Agency |
Congressional Research Service |
Summary:
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 "tenancy-in-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 rules--such as considering ownership on a claim-by-claim,
rather than a patent-by-patent basis--are 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.
