In the insurance and financial services industries “inventing” has never been the focal point or job assignment that it has been in the more high tech industries, such as aerospace, pharmaceuticals and electronics. 

If your job is high tech you may be specifically hired to make inventions.  You might invent new machines (e.g. cell phones), produce new products (e.g. pharmaceuticals), or develop better, stronger, or more economical raw materials (e.g. plastics).  In that kind of job, it is expected that you will be inventive and patents may flow from your work like sparklers in the night sky.  A patent-a-year is not uncommon.  A patent-a-week is not unheard of.  Inventors that prolific might well deserve the nickname “Sparky”.

On the other hand, professionals in the insurance and broader financial services areas are not as likely to acquire a nickname like Sparky.  The “products” they make can’t be held in your hand or shipped by a truck.  Their invention is hard to see.  Furthermore, it is unlikely that people who work for insurance companies, banks, or financial services companies were hired to be or expected to be inventors.  The industry mind set is different.  “Creative financing” is not always seen as a virtue.  That is not to say, however, that those people are not inventive.  All creative problem solvers are potential inventors.  So, while technology professionals may clearly recognize their inventorship abilities, those in the finance industries may need a little prodding.

Invention is a discovery process.  It may result from seeing what everyone else sees but in a different way.  It is a creative process applied with an open mind.  It can produce results in an instant or take years of determined investigation.  It may involve not just an overall approach to solving a problem but a full, detailed workable solution. 

Human progress, beginning in pre-history, has only been possible through invention.  The wheel, for example, dates from Mesopotamia around 3,500 BC.  The protection of individual invention through the use of patents, however, is a relatively recent phenomenon so the inventor of the wheel not only gets no credit today but, probably, got none then either.  Of course an inventor has no obligation to seek patent protection.  Patent or not, he or she will still be the inventor.  And, it should also be recognized that invention can be a group activity.

Inventorship in the US is determined by the “claims” of a patent.  Claims are one sentence lists of the features of the actual invention.  The technical patent term for these features is “limitation”.  A claim, therefore, lists the limitations or boundaries of what the inventor(s) have exclusionary rights to.  All persons who came up with the original idea for at least one limitation or combination of limitations must be listed as an inventor.  It’s not an option.  It’s also not something that can be bestowed upon someone as recognition for their support.  The sponsor of a research project or the manager of a group cannot be listed as an inventor unless he or she had the original idea for at least one of the limitations in the claims. 

Inventorship is a legal determination made by a patent agent or attorney based on the evidence (e.g. signed dated notebook records, emails, personal testimony, notes on the back of napkins, etc.) provided by the persons involved in coming up with the invention.  Once the agent or attorney has the evidence, then he or she can compare it to the limitations of the claims and determine inventorship. 

It’s generally a good idea to err on the side of listing more inventors rather than less.  As we will discuss below, the downside risks of failing to list an inventor in a timely manner can be substantial.

In the financial services industry, it is common for people to feel a bit uncomfortable about being credited with invention.  “Oh”, they say, “Anyone could have come up with that”.  Perhaps, but if the solution is not obvious to a person of ordinary skill then it is inventive.  The issue is not that someone else could have solved the problem but who actually did.  Serendipity counts.

Things can get dicey if an inventor is left off of a patent.  That person can go off and file his or her own “interfering” patent application on the same invention.  Sorting the mess out can cost a great deal of time and money, particularly if said person is a disgruntled ex-employee.

Sometimes inventors refuse to be listed on a patent.  This can happen when a consultant is hired to solve a problem, comes up with a creative solution and wants to be free to use that solution with other clients.  It is best to sort out issues of ownership of inventions before a consultant is engaged.   Similar to ex-employees, negotiating a solution after the fact can cost a great deal of time and money. 

Inventorship is critical in the US because every inventor listed on a patent will own their own copy of the patent once the patent issues.  Each inventor will be able to license the patent to whomever they wish without regard to the desires of any of the other inventors, no matter how small their inventive contribution was.

To forestall multiple ownership of the same patent, it is common for all inventors to decide before a patent application is filed, who, or what corporate entity will own the patent when it issues.  Each and every inventor then signs an “assignment” document transferring their ownership rights to the person or corporation.  That way, only one entity controls the patent.

If the inventors are the employees of a corporation, the “decision” to assign might be in the form of an employee agreement each of them signed when they were first hired.  In the employee agreement, the employee agrees to assign ownership to any invention he or she makes during the course of employment to his or her employer.  This may be unfamiliar in the financial services industry where “invention” is not normally seen as an everyday job function, but it is nearly universal in the more traditional, patent intensive, technology based industries.

Sometimes inventorship can change as a patent application is “prosecuted”.  Prosecution is the negotiation between the inventors and the patent office as to what limitations should be in the claims.  It is very common for the limitations to be changed as new prior art is uncovered by a patent examiner.  When the amended claims are finally allowed, it is prudent to revisit the issue of inventorship to make sure that no one has been left off or that everyone that is listed should be listed.  If a change needs to be made, it’s a simple process as long as there has been no “deceptive intent” on the part of the inventors.

So, even if you never thought of yourself as an inventor, if you solve a problem creatively you may be one.  If that creative solution finds its way into a patent, then you should be listed as an inventor.