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|Albert Minn is a patent attorney with 10 years of experience practicing before the United States Patent and Trademark Office.|
When multiple people contribute towards an invention, determining who is and is not an inventor for a patent application is an important matter. 35 U.S.C. §116 requires each joint-inventor to state an oath that each listed inventor being named as a co-inventor is accurate and truthful. Yet, determining what contributions are sufficient to establish inventorship is not always straightforward; egos and personal ambitions may blur sound judgement. Further, some inventors may mistakenly attribute inventorship to non-inventors involved with the invention out of an abundance of caution. Errors in listing inventorship could be problematic during examination of the application. In some cases, improperly listing inventors could lead to a granted patent being invalidated.
Inventorship hinges upon whether a person materially contributed to the invention that is defined by the claimed invention. Under US law, an inventor is a party who contributes to the conception of an invention. Specifically, according to §116, “[w]hen 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.”
In other words, each inventor must merely “perform only a part of the task which produces the invention. On the other hand, one does not qualify as a joint inventor by merely assisting the actual inventor after conception of the claimed invention.” Ethicon, Inc. v. US Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998). But, a co-inventor does need to make a contribution to at least one claim to be considered an inventor. SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878 (Fed. Cir. 1988). Thus, the critical question for joint conception is who conceived, as that term is used in the patent law, the subject matter of the claims of the invention.
Another complication to determining inventorship includes the fluidity of inventorship during prosecution of the application. Inventorship is not fixed in time and may change during prosecution. Particularly, inventorship is not determined when the initially contemplated claims are drafted, but when the claims are fully-examined and allowed by the Patent Office.
Although options may be available for correcting inventorship, taking steps to ensure the correct inventors are named and correcting inventorship mistakes early when errors are discovered can avoid the high costs of correcting inventorship or patent litigation, should a dispute arise. If you have questions about determining inventorship or other aspects of the patent process, give Grell & Watson a call at (919) 825-3309!