Cassandra L. Wilkinson
The Importance of Inventorship in US Patent Law
It is important to accurately determine the inventor or inventors of an invention set forth in an application for a United States Patent.
An inventor is the person or persons who invents or discovers a new invention that is the subject of a patent application as stated in the following patent laws:
“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S. C. § 101. “An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.” 35 U.S. C. § 111(a)(1).
“When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” 35 U.S. C. § 116.
The act of inventing is the act of conceiving. After an invention is conceived, it is reduced to practice, by making and testing the invented object or process under conditions which it will typically encounter. Just as often the "reduction to practice" is effected by filing a patent application as is allowed under patent laws. Thus, to determine inventorship it is important to focus upon the conception or conceptions involved.1
Those conceptions are the conceptions set forth in the claims which conclude the patent application. These claims will reflect the preferred and described embodiment of the invention, but they may focus on certain elements of the preferred embodiment and omit others. For that reason, when determining inventorship it is necessary to examine the claims of the application.
The conception of an invention may have occurred in the mind of a single person, or may have occurred during joint efforts by two or more people. It is not necessary for these people to physically work together, or to work on the invention at the same time, or to make the same type or amount of contribution, or to each contribute to the subject matter of each claim of the application. Instead, two or more people may be joint inventors as a result of their joint efforts concerning the invention as defined by the various claims in the application. When each contributed important aspects of the claimed invention to the joint effort, then each properly should be named as a joint inventor. On the other hand, the invention may have come into being as a result of a conception by one person. In such a case, even though others may have suggested variations or elaborations to the invention, if those variations or elaborations would have been obvious to one skilled in the field of the invention, then the invention would be the product of the single, initial person.2
While errors in determination of inventorship may be corrected, provided they arose without any deceptive intention, still it is important to accurately determine inventorship. This determination should be based upon and reflect the records of the invention.
Willfully naming someone as an inventor who is known to not be an inventor constitutes grounds for invalidating any patent based on the invention. The person or group of people named in an application as the inventor of the invention should only include those who significantly contributed to the invention, and not those who are named solely because they were the supervisors of the actual inventors, for example.3
If you have questions about inventership on an application or patent, you should consult a patent attorney.