PATENT LAW YOU CAN USE™
Inventorship
Abstract - A patent application must be filed in the name of the inventor, or inventors in the case of joint inventorship. Incorrect naming of the inventors of a claimed invention can result in a finding of invalidity of the patent. Fortunately, there are ways to amend the listing of the named inventors, so long as the original naming of inventors was done without an intent to deceive.
In the United States, a patent application must be filed in the name of the inventor. This is based on the provision in the Constitution that states that "The Congress shall have power . . . To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."
This requirement to name the actual inventors in a patent application has been codified in Title 35 of the United States Code and Chapter 37 of the Code of Federal Regulations, which provide that a patent application is made by the inventor and that the application must be accompanied by an oath in which the applicant swears that he or she believes himself or herself to be the original and first inventor of the invention.
An invention may be the product of a single inventor or may have multiple inventors, referred to as "joint" inventors. In order to have joint inventors, it is not necessary that the inventors physically worked together or at the same time, just that there has been some collaboration between the inventors. Even if one inventor contributed the bulk of the inventive process and another inventor contributed only a small, but essential, component, they are considered to be joint inventors.
Filing an application in the name of someone who is not an inventor, or omitting someone who should be listed an inventor, can result in a ruling that the patent is invalid. A court will not take the draconian measure of invalidating a patent, however, if the error in the naming of the inventors was done without deceptive intent. What is required to avoid invalidity of a patent for failure to correctly identify the inventors is that a reasonable good-faith effort is made to determine the identity of the actual inventor or inventors.
Even though the danger of patent invalidity is small for incorrectly naming the inventors, it is still important to accurately determine the true inventorship. Failure to take reasonable steps to determine the correct inventorship can be grounds for invalidating a patent. Also, because inventorship is linked to ownership of the patent, failure to identify the correct inventors can have serious consequences related to how the patent rights are exploited.
So, how does one go about determining who should be included as an inventor? The first step is to clearly identify what the invention is. It is extremely difficult, if it is even possible, to determine who invented something unless what it is that has been invented is understood.
For patent purposes, an invention is what is recited in the claims. Therefore, it is a good idea to draft a set of claims that define the invention. Then, the individuals who invented the invention as it is claimed may more readily be identified.
In order to do this, it is essential to understand what constitutes the act of inventing. Inventing is a two-step process. The first step is conception of the invention. This has been defined as the formulation in the mind of an inventor of the complete means for solving a problem in such a way that one of ordinary skill in the art could practice the invention without unduly extensive research or experimentation.
The conception of the invention may be complete even though experimentation continues. This happens, for example, when the concept of the invention has been proven, but experimentation is still needed to streamline the invention, or to make it commercially viable. On the other hand, if experimentation, especially experimental failures, reveals that the concept of the invention is faulty, the conception is not considered to be complete.
By itself, conception is not sufficient to have an invention. The invention must be reduced to practice, which can occur in either of two ways. There may be an "actual" reduction to practice in which the invention is made and tested and determined that it will work for its intended purpose. Or, there may be a "constructive" reduction to practice in which a patent application is filed that describes the invention sufficiently to allow one of skill in the art to practice it.
Only if there is both conception and reduction to practice is there an invention. However, to determine who actually is an inventor, only conception is considered. Each person who contributed to the conception of the invention is an inventor.
Someone who contributes to the reduction to practice but not to the conception is not an inventor. This is so even though the reduction to practice may be the most time-consuming, expensive, and difficult part of the inventive process.
If often happens, though, that difficulties are encountered during the process of reduction to practice. Sometimes, the invention as initially conceived does not work as it should and a technician then devises a way to make the invention work. In this case, the technician becomes an inventor because the conception of the invention was not complete without the contribution of the technician.
Some examples may help to clear up the concepts of inventorship. An individual is not an inventor if he or she:
- contributed an obvious element to the invention,
- suggested an idea without a way to implement the idea,
- only followed instructions in working on the invention,
- participated in consultations about the invention before or after conception of the invention,
- is the department head or supervisor of an inventor but did not actually contribute to the conception of the invention,
- provided the funds or equipment necessary to develop the invention but did not actually contribute to the conception of the invention.
There are many ways to conduct an inventorship inquiry to determine who did and who did not contribute to the conception of the invention. One method used by some patent attorneys is to ask the question, "If the idea of this person had not been contributed, would the invention exist, as it is claimed?" If a second individual could have produced the same results that the person in question did in working on the invention, then this person is not an inventor. Conversely, if the person could not have been replaced by just any comparably qualified individual because the work on the invention required an original, non-obvious mental process, then the person is an inventor.
Because an invention is defined by the claims, an amendment of the claims during prosecution may necessitate an amendment in inventorship, most commonly to delete a named inventor. This is done by submitting a petition to the Patent Office identifying each named inventor who is being deleted and acknowledging that this inventor's invention is no longer being claimed in the application.
Until recently, correcting a mistake in naming inventors was tedious and expensive, because it required the submission of proof of the lack of deceptive intent. Recent amendments to the law now permit amending inventorship of a patent application by merely submitting a statement from each inventor to be added and from each inventor to be deleted that the error in inventorship occurred without deceptive intent on his or her part. , Of course, these statements may be challenged in a later court proceeding if a litigant believes that the error in inventorship was indeed fraudulent. After the issuance of a patent, amendment of inventorship requires the submission of proof of facts that show lack of deceptive intent in the inventorship error. Inventorship may even be amended during a litigation, if the court is convinced that the error in inventorship occurred without deceptive intent.
Changes in the law during the past 20 years have made it much easier to correct inventorship errors and to avoid the harsh penalty of invalidity that used to occur when inventors were omitted or when non-inventors were named as inventors. Today, all that is required is that a reasonable, good-faith effort is made to correctly name the inventors. If this has been done, then inventorship may later be amended to add or remove inventors.
Howard M. Eisenberg
© 2000
