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claims to which that inventor never contributed. 148 Despite frequent criticism of the court’s opinion,149 the result was all but dictated by the language of Section 116 and the concept of unity of invention that underlies patent law. 150 But this policy has the unfortunate consequence of giving the most important contributor to an invention no greater rights than the least important.151 The probable result is to dampen the incentive to engage in team research, because adding new members to a research team—especially those not obligated to assign their rights to the same employer—could result in a loss of meaningful patent rights. 152 The current jurisprudence therefore gives patent applicants a strong incentive, and no realistic disincentive, to fraudulently omit joint inventors from the patent application in order to avoid sharing the patent bounty.
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Ethicon, 135 F.3d 1456. See, e.g., id. at 1469 (Newman, J., dissenting); Gregory N. Mandel, Left-Brain versus Right-Brain: Competing Conceptions of Creativity in Intellectual Property Law, 44 U.C. DAVIS L. REV. 283, 294-95 (2010). 150 37 C.F.R. §§ 1.475(a), 1.499 (2011). U.S. law on this subject reflects the requirements of important international patent treaties. See PCT, supra note 80, arts. 2(i), 3(4)(iii), 17(3); Patent Cooperation Treaty Regs. Rule 13.1 (“The international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”)); Paris Convention for the Protection of Industrial Property, supra note 81, art. 4(G). 151 Gregory Mandel has proposed giving proportional rights to joint inventors who made contributions of varying levels to the invention. Mandel, supra note 149, at 353. In principle, such a rule could mitigate the problem to a degree, but suggesting the adoption of equitable apportionment methods is much easier in the abstract than operationalizing the concept. Judgments about the relative creativity of different collaborators’ inventive contributions would be a highly subjective exercise even with perfect information. In practice, it would be impossible due to the frequent inability to differentiate the source of inventive contributions in collaborative research and the temptation of any given collaborator to “remember” that another’s contribution was actually his own. After all, the main purpose of the modern Section 116 of the Patent Act is to eschew nice parsing of inventive contributions among coinventors. Moreover, not all inventive contributions are creative; some may take the form of perceptive observations of a helpful phenomenon by a prepared mind, or simply by systematic experimentation. Such contributions may qualify as inventive regardless of the absence of creativity. See 35 U.S.C. § 103(a). How is a court to weigh, on minimal objective evidence, the incomparable values of one collaborator’s creative insight against another’s tireless experimentation? Apportionment is, in short, sound in theory but not a practical solution to the problem of skewed inventorship rewards. 152 See Mandel, supra note 149, at 347. 149