Patent Information

Who is an inventor or co-inventor for a patent?
 

Under U.S. patent law, an “inventor” (or co-inventor) is each person who contributes to the conception of at least one claim in a patent application.  Conception is the mental part of the inventive act—formulating the complete and operative idea of the invention, as it is claimed, in sufficient detail that a person skilled in the art could reduce it to practice.  In contrast, a person who contributes to the actual reduction to practice (e.g., building a prototype or carrying out testing) but does not contribute to the conception of any aspect of the claimed invention is not an inventor.

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Why is it important to make a good faith effort to correctly identify the inventor(s)?
 

Misjoinder of inventors – the omission of a person who is an inventor or inclusion of a person who isn’t an inventor—can render a patent invalid or unenforceable if the misjoinder is done with “deceptive intent.”  
In addition, rights to the patent initially vest in the inventors.  Therefore, properly identifying inventors ensures that the rights are correctly assigned to the company or other designated assignee.

 

Misidentifying inventors could lead to disputes over ownership or require corrective actions later, which could delay enforcement or licensing efforts.
 

There is also an ethical duty as a patent applicant and as a patent attorney or agent representing the application, to make a good faith effort to identify and disclose the correct inventors.  This duty applies both at the time of filing and throughout the prosecution of the patent application.

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How is inventorship determined?
 

There are many practical approaches to determining inventorship.  The approach and degree of comprehensiveness depends upon several factors, including the number of participants in the inventive process, the nature of the invention, and familiarity of the potential inventors with the patent process.​​​  For example, in a case in which the client who is familiar with the definition of inventorship, there is a small number of people involved in the innovation process, and the invention is relatively simple, asking the client to review the claims and identify the person(s) who made a conceptual contribution to the subject matter of the claims may be sufficient.  Conversely, in cases in which the client is unfamiliar with the definition of inventorship, a large team of people participates in the innovation process, and/or the invention is complex, it may be appropriate for patent counsel to interview each member of the innovation team and map each person's contribution to the claims.​