Article Law360

Peeling Back The Layers Of Inventorship In 'Glass Onion'

In this article for Law360, partner Tasha Gerasimow, with co-author David Gerasimow, assesses the Netflix movie "Glass Onion: A Knives Out Mystery" and how it relates to the current state of the law of intellectual property ownership, as well as the underlying documentary and evidentiary issues.

"Glass Onion: A Knives Out Mystery" provides audiences with a comedic murder mystery sequel. And, for the patent-minded among the audience, this Netflix sequel also presents numerous opportunities to assess the current state of the law of intellectual property ownership as well as the underlying documentary and evidentiary issues.

For those who have not seen the Rian Johnson-directed movie, the plot centers around a weekend reunion at the isolated island compound of a billionaire tech entrepreneur, who is joined by members of his eclectic inner circle of so-called disrupters, each with the motive and opportunity to commit murder.

As the plot unfolds, we learn that some of the group's most bitter disputes relate to the conception and ownership of intellectual property fundamental to Alpha technology, which we are told is some sort of groundbreaking artificial intelligence tech. The film then proceeds as a classic whodunit and is a more than watchable holiday treat.

In the film, which seemingly takes place in summer of 2020, we learn that conception of the relevant technology took place about 10 years ago, i.e., around 2010.

As a refresher, the first-to-file provisions of the America Invents Act went into effect on March 16, 2013. Along with it, the U.S. embraced a first-to-file system in which it does not matter who conceived of an invention first — rather patents are awarded to the first to file.

Thus, while the relevant patent filings alluded to in the movie could have been filed pre-AIA or post-AIA, depending exactly on when they were filed and their subject matter scope — we assume for the purposes of this whodun-invent-it, pre-AIA law governs.

Under pre-AIA law, Andi, one of the disrupters would be an inventor — and patent owner, absent an agreement to the contrary — if she first had the idea for the Alpha technology that was definite and permanent enough so that one of ordinary skill could understand the invention.[1]

But, as accurately conveyed in the movie, her word alone would not suffice — in other words, Andi's testimony about inventorship must be corroborated by independent evidence.

And when Andi's closest friends failed to corroborate her invention claims during trial, the original version of a napkin containing an alleged disclosure of the invention becomes critical evidence to support her claims.

But, would a back-of-the-napkin sketch be enough?

Proof of inventorship by an unnamed inventor requires clear and convincing evidence.[2] Does the napkin's contents provide enough detail about the invention to meet this burden for all patent claims? Does it even support Andi's claims that the information was written down at the time she claims?

While at least one character points to the imprint of the since-closed bar's logo on the napkin to suggest the napkin reflects an original conception document, this imprint fails to provide concrete evidence of when the text on the napkin was written. Did someone find an old napkin and subsequently write on it?

While many questions remain, "Glass Onion" provides a seasonal reminder for relevant parties to check their invention disclosure policies and best practices.

First, as to the document itself, "Glass Onion" reminds us that conception documents can take any form — even sketches on bar napkins. These documents are most useful when they contain not only contain a full description of the invention, but also dates when the invention occurred and who was involved and their role.

Thus, inventors should keep accurate records substantiating their work in developing an idea, including the date of the invention. In addition, such documents should also be witnessed by others present, which could also be helpful in deterring former friends from later perjuring themselves.

Second, "Glass Onion" reminds us that storing valuable conception documents in a forgotten book on a bookshelf is to be avoided. To the contrary, they should be indexed and readily accessible. Inventors should identify and retain any documents relevant to conception and reduction to practice.

Ideally this information is shared with patent prosecutors at the time of patent application drafting. Second best, this information is collected during any lawsuit involving inventorship disputes.

Moreover, to the extent previously lost conception documents are eventually found, best practice is not to place them in red envelopes that may be stolen by former business partners, but rather to share them with an attorney who will properly record and retain them.

Finally, "Glass Onion" serves as a reminder that patents are invalid unless the correct inventors are listed. Relevant to Andi's claims, inventorship is an issue that can be corrected at any time — even post-issuance of the patent. Specifically, Title 37 of the Code of Federal Regulations, Section 1.324, provides that
Whenever through error a person is named in an issued patent as the inventor, or an inventor is not named in an issued patent, the Director, pursuant to 35 U.S.C. 256, may, on application of all the parties and assignees, or on order of a court before which such matter is called in question, issue a certificate naming only the actual inventor or inventors.

Thus, the movie prompts practitioners to investigate and evaluate any inventorship claims, not only at the time of filing patent applications, but also during periods of due diligence and litigation.

While detective Benoit Blanc may have solved the murder mystery in "Glass Onion," the question of who invented the relevant Alpha technology remains unsolved. Since the pendency of many inventorship disputes often lasts for several years, we look forward to resolution of these patent ownership issues in future sequels.