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The Ins and Outs of Inventorship

by Patents Integrated
December 15th 2021

In patent law, knowing not only what has been created but who created it is critical. That's because the inventor holds the intellectual property behind their innovation from the very star... More

Hello and welcome to the novel and non obvious podcast where we discuss the intellectual property topics impacting the startup world. My name is Yoriko mori to the host of this podcast and founder of patents integrated. So we're gonna talk about one of my favorite topics today. Of course that is Theranos, but we're going to talk about it in terms of inventor ship, which is a little bit more obscure. So many of you know that I've been fascinated with the Ryzen fall of Theranos, the infamous healthcare tech company whose founder, Elizabeth Holmes is currently on trial for wire fraud since I was working as in House I. P. Council at a medical device company around the same time that Theranos got its unicorn valuation kind of been scratching my head at the early Theranos patent filings and ever lengthening list of high profile investors. So this was almost 10 years ago that I was thinking about some of these topics and I read john Kerry rose bad blood like was pulp fiction and I've been following the trial coverage too.

So my voyeurism tendencies aside, one particular issue stands out to me about the Theranos situation and that is inventor ship inventor ship, especially in front of the US patent and trademark office can be a difficult concept for many inventors to grasp and can cause a lot of problems down the line if you don't get it right. So what is inventor ship specifically within the context of the USPTo determining who should be named on a patent seems like it should be as simple as listening to people who worked on the invention but that's not quite threat. This simplification does not take into account the complexity of many modern patents in that there are a lot of amendments that happened between the time a patent application is prepared and then it goes through the negotiation process with the patent office and then it becomes issued as a issued patent.

So for a patent application, any given device a lot of times is made up of a lot of components and parts and determining who contributed to each of those component parts and what actually gets patented is an essential aspect of determining inventor ship. That is even extremely prolific inventors often can't claim that they invented all the parts of a highly complex invention. That is an inventor as defined by the U. S. P. T. O. Is a person who contributed to an issued patent claim. So you know that section at the end of each issued patent, that's an enumerated list of the inventions covered by that patent. So an inventor is someone who contributed to an issued patent claims. Now this is very different from being a named author on a journal article. For example, when I was in grad school in the article that I submitted to a journal as part of my graduation thesis, I named pretty much everybody in my research group whether or not they contributed to the actual research or not because they supported me in different ways.

You can have a really big list of authors on a journal article but that is not the way that you should do it in a patent application. So let me reiterate in order for a person to rightfully hold inventor ship in a patent, they must have contributed to one or more of the claims or the component parts of that invention. The thing that complicates it though is that it is common for a patent application to be filed with a whole bunch of claims and then that list of claims get amended or reduced or certain claims be withdrawn during the prosecution of the patent application. So then what comes out at the end as an issued patent may not have the same claims that went into the original application in the first place. So that if the component parts of those claims that the US B2 allowed to issue as a patent do not include parts to which for example you contributed as an inventor, then you should not be listed as an inventor in the issued pants.

I know this is really complicated but the important thing is to get the inventor ship of that final issued patent correct? Because otherwise if you don't that can lead to a whole lot of problems later. For example you can't include extra inventors or omit certain inventors just because you don't like them or they left the company, you have to have the correct list of inventors because the primary reason is that incorrect inventor ship can be grounds for the invalidation of an issued patent. So even if you went through the whole process and the expense of getting a patent allowed if you have incorrect inventor ship that patent is invalid. So now that we have some background on what inventor ship is and how it can be determined, let's take a look at how this concept can be applied to the Theranos situation. So we know that Theranos had an extensive patent portfolio. As of today. The Theranos patent portfolio now owned by another organization contains 859 issued patents 544 of which lists Elizabeth Holmes as an inventor.

Now that's the curious part to me, I'm not saying that Elizabeth Holmes may not have contributed to all of these. Maybe she did contribute to all of these but the fact that she was not the technical lead at her company, she was not the C. T. Oh she was the Ceo and even her stanford undergraduate advisor at the time told her that she didn't have the skills to actually implement the inventive product that she wanted to make as a part of the Theranos product portfolio. So even despite that she is still listed as an inventor on a majority of these pretty complex patterns. Now these patents were produced and approved over an 18 year period between 2003 and now. So now while this number of 500 plus issued patents for an inventor is not an unheard of number, It does call into question the degree that Holmes was actually involved in inventing many of these products because during this 18 year period she was also building and running the company raising money, all sorts of things like that.

For much of this time, her documented role within the company was far less technical and much more on the executive side. So I'm speculating it is quite possible that Theranos may have inflated the number of patents that Holmes was actually involved with in order to exaggerate her image as an emerging all tour of the med tech world. I'm not saying that's what actually happened. I'm just saying that it calls into question the veracity and the validity of the Theranos patent portfolio. That means that many of these issued patents that name Elizabeth Holmes as an inventor may be vulnerable to future intellectual property lawsuit if maybe they did not list the correct set of inventors I know from experience in doing litigation support that looking for misrepresentation of inventor ship is one of the first things that a defendant might do if looking to attack some of Theranos is intellectual property.

So like I said, I'm not saying that Elizabeth Holmes didn't contribute to the inventions covered by the 500 plus Theranos patents on which he's named as inventor, we haven't even touched on the fact that the thoroughness technology allegedly didn't actually work so then while you can file for patent protection before actually making the invention, if you know something isn't going to work, that's also another ground for potential invalidation of any patent that issued from that patent application. The thoroughness patent portfolio is still quite active so there are still pending patent applications that are going back and forth with various patent offices around the world. Even if the company itself is now defunct, the Theranos patent portfolio is now owned by an entity called labrador diagnostics and its parent company, Fortress Investment Group is notorious for trying to enforce some of their patents Against companies that were making COVID-19 tests.

Labrador took a lot of flack for doing such a company that was trying to do some life saving work. The essential takeaway though is that the Theranos patent portfolio still contains elements that may be important in the fields of biotech or MedTech or health care. So that means that if Fortress and labrador diagnostics choose to do so there may be years of patent lawsuits to come. We hope you enjoyed this episode of the novel and non obvious podcast. Feel free to send us comments or suggestions for startup and I. P related topics you'd like us to discuss on this podcast at info at patents integrated dot com. Our producer is Joel Davis of analog digital. Our marketing specialist is tim Sprinkle of layout content. Our theme music used with permission is the Workday Takato from A Life and A Day, composed by Sherry's lighter and performed by Michelle Stanley and flute, Quattro on guitar and yours truly and cello. Here is our obligatory disclaimer. The content of this podcast is informational only and not intended to be legal advice.

The novel and non obvious podcast is a production of patents integrated and all rights are reserved. See you next time.

The Ins and Outs of Inventorship
The Ins and Outs of Inventorship
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