Would you know an inventor when you see one?

Why determining correct inventorship is important and tips on how the inventorship determination may be done correctly from the outset

Identifying who is and is not an inventor can be a challenging, if not awkward, task for many legal departments at companies and universities. Many scientists and engineers are accustomed to acknowledging even the smallest contributions of their colleagues in publications. However, unlike authorship, inventorship is a legal determination whereby a competent patent practitioner gathers all of the relevant information and completes an inventorship analysis. This article highlights the importance of determining correct inventorship and provides tips on how the inventorship determination may be done correctly from the outset.

Why is identification of correct inventorship important?

Again, inventorship is not authorship. There are more than just hurt feelings at stake when it comes to naming inventors on a U.S. patent application. Naming the correct inventor(s) is important for several reasons. For example, intentionally failing to correctly identify the inventor(s) of a U.S. patent application is regarded as inequitable conduct against the United States Patent & Trademark Office (USPTO) and may result in an unenforceable patent. A patent may issue lawfully only in the name of those who meet the criteria of inventorship discussed below. As another example, the inventors listed on a patent application may affect the assessment of what constitutes prior art. For example, the prior published work of A may be prior art to a patent application that names A and B as inventors.

What is an “invention” and how is “inventorship” determined?

There are two parts to an invention — “conception” and “reduction to practice.” Conception of the invention is generally understood to mean the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention. An invention is complete and operative when the inventor is able to make a disclosure that would enable a person of ordinary skill in the art to make and use the invention without extensive research or experimentation. Reduction to practice of the invention can be actual reduction (e.g., sufficiently developing and testing the invention or a prototype of the invention), or constructive reduction (e.g., filing a patent application that sufficiently describes how to make and use the invention).

An inventorship determination should be carried out on a claim-by-claim basis of all patent application claims that are prepared for filing at the USPTO. Therefore, the first step of determining inventorship is to draft the claims and then construe them in light of the written specification and drawings that will be part of the patent application. In other words, before determining the inventors, one must first determine the invention and then write claims to cover that invention. Once the claims have been construed, the most important consideration in determining inventorship is initial conception of the invention. Unless a person contributes to the conception of the invention, that person is not an inventor, regardless of whether that person did the bulk of the work to reduce the invention to practice. The test of inventorship is therefore whether a person has made an original, conceptual contribution to at least some portion of one of the claims of the patent application.

An individual is likely an inventor if he/she:

  • Conceives the subject matter of at least one claim in the patent application.
  • Collaborates to conceive the subject matter of at least one claim in the patent application.

An individual is likely not an inventor if he/she:

  • Contributes an obvious element to the invention.
  • Follows the instructions of the conceiver(s).
  • Adopts information derived from another.
  • Supplies a known component or starting material.
  • Refines or perfects another’s design.

The inventorship determination should be completed at the time the patent application is prepared and before filing at the USPTO. Whenever possible, a patent practitioner should conduct an inventorship interview with all potential inventors and allow the individuals the opportunity to explain their contributions. The following questions may be asked, first to understand the invention and then to understand the various contributions before and after conception: What problem is solved by the invention? When did you know that the problem was solved? Who helped solve the problem and what were their contributions? Did your original conception change over the course of reducing the invention to practice and, if so, who was involved in making those changes?

It should be noted that correction of inventorship, even after a patent issues, is generally allowed when the failure to identify the correct inventor(s) was done without deceptive intent. However, when there is deceptive intent in naming the inventor(s), such as by intentionally omitting the name of a person known to have been an inventor, any patent obtained can be held unenforceable. A thorough inventorship inquiry before the patent application is filed can save time and money down the road, and also help ensure that any patent that that issues from the patent application is enforceable.

 

DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney. Views expressed are those of the author and are not to be attributed to Marshall, Gerstein & Borun LLP or any of its former, present or future clients.

Contributing Author

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Eric M. Brusca

Eric M. Brusca, Ph.D. is a partner at Marshall, Gerstein and Borun LLP. His practice focuses on biotechnology patent prosecution for a...

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