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Determining Inventorship for Patent Applications

Patent Attorney

Raleigh: 4801 Glenwood Avenue, Suite 200, Raleigh, NC 27612.  

(919) 825-3309  


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!

Intellectual Property Updates: Patents, Trademarks and Copyrights

By Albert Minn

Raleigh: 4801 Glenwood Avenue, Suite 200, Raleigh, NC 27612.  (919)-825-3309  Email 

Patent Attorney

Albert Minn is a patent attorney with 7 years of experience.  He tracks the U.S. Patent and Trademark Office  and the Copyright Office for news.  Please find his most recent update below.


The United States Copyright Office has published an interim rule amending its regulations concerning the recordation of transfers of copyright ownership and other documents pertaining to a copyright under 17 U.S.C. Section 205, and notices of termination under sections 203, 304(c), and 304(d). Link

The United States Copyright Office has published a final rule establishing a separate, lower filing fee for recording documents with the Office when they are submitted with an electronic title list, i.e., a list of certain indexing information about the works to which such documents pertain.  Link.

The United States Copyright Office has implemented a series of technical upgrades to its electronic registration system.  Link.

The United States Patent and Trademark Office (“USPTO”) published International Trademark Classification Changes with a final rule to incorporate classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the purposes of the Registration of Marks (Nice Agreement).  Link

The NC bar has published an article by Jacob Moore regarding the recent Federal Circuit decision in In Re Janssen that held that a patent issuing from a continuation-in-part (CIP) application is not eligible for 35 USC Secton 121 safe harbor protection, even if the patent is re categorized as a divisional application during reexamination.  Thus, the court determined that the patent at issue—US 6,284,471 (the ’471 Patent)—was invalid over reference patents US 5,656,272 (the ’272 Patent) and 5,698,195 (the ’195 Patent) under the doctrine of obviousness-type double patenting.  Link.

The United States Patent and Trademark Office (“USPTO”) provided a notice that addresses the new practice of requiring separate maintenance fees in each reissued patent based on a single original utility patent, and in original utility patents for which a reissue application is pending and at least one reissue patent has already issued. The new practice for multiple reissued patents and certain original patents that are the basis for reissue applications is set forth in the recent final rule to adjust patent fees. See Setting and Adjusting Patent Fees During Fiscal Year 2017, 82 FR 52780, 52791 (November 14, 2017).  Link.

The United States Patent and Trademark Office (“USPTO”) provided a final rule with changes in requirements for collective trademarks and services marks.  Link.

The United States Patent and Trademark Office (“USPTO”) electronically provided the ninth edition, Revision 08.2017, of the Manual of Patent Examination Procedure (MPEP).  Link.

The United States Copyright Office has published a final rule amending regulations that govern the deposit requirements for certain types of literary works and musical compositions. Link.

The United States Copyright Office has provided notice of modernizing its practices to increase the efficiency of the group registration option for photographs. Link.

Call Albert Minn for a Free patent consultation (919) 825-3309 or email.

Raleigh: 4801 Glenwood Avenue, Suite 200, Raleigh, NC 27612.  (919)-825-3309  Email