Inventorship disputes appear to be proliferating. This is not surprising in light of the 1993 relaxation of the standards for joint inventorship. Although the vast majority of claims fail, the handful of cases indicating successful inventorship claims can be quite lucrative, which makes it reasonable to expect the upward trend in number of cases to continue. Moreover, the lack of clarity on certain key aspects of inventorship law is apt to encourage further claims. This article begins, as a cautionary tale of sorts: an analysis of the unclear aspects of inventorship law. This includes the as yet unresolved variations in caselaw as to the basic standard for inventorship and as a result what can serve as a basis for an inventorship claim and the fact that even under the predominant standard ambiguities exist over what and how a contribution can be adequately shown. It then proceeds to analyze four common situations that can present inventorship problems, and suggests practical steps to minimize exposure and create a solid documentary record to defeat any later inventorship claims.
Andrew B. Dzeguze, Avoiding the "Fifth Beatle" Syndrome: Practical Solutions to Minimizing Joint Inventorship Exposure, 6 J. Marshall Rev. Intell. Prop. L. 645 (2007)