The following article appears in the journal JOM, 46 (6) (1994), p. 62. JOM is a publication of The Minerals, Metals & Materials Society

Getting Inventorship Right the First Time

One of the most difficult questions that must be answered by a patent professional is "Who is (are) the inventor(s) of this invention?" Although the rules are simple to state, the application of these rules is extremely difficult; this difficulty is compounded by many non-legal factors as well (e.g., office politics and business). This article attempts to shed light on this difficult subject so that non-patent professionals and inventors will better understand the law of inventorship and how the law is applied to certain situations.

Before delving into the law of inventorship, however, it must be emphasized that inventorship is strictly a legal question that must be determined by a patent professional. The patent professional must be free to make an independent investigation and an informed judgment based only on the facts of the investigation and the law of inventorship. Political considerations (e.g., supervisors taking credit for the inventions of subordinates) or business considerations (e.g., not naming inventors who work outside the company) cannot enter into the decision. An incomplete, biased, or politically motivated investigation and determination can lead, ultimately, to the issuance of an invalid patent.

Under U.S. patent law, only a true and original inventor may apply for a patent. The true and original inventor may be a single person or a group of people. Also, a patent application must only name people as inventors. A company or other legal entity cannot be named as an inventor in a patent application. Confusion sometimes arises when the concepts of inventorship and ownership become mixed. If all of the inventors had agreed, as a condition of employment, to assign their inventions to the company, the company owns the invention. The inventors, however, are named in the patent application. Hence, the question of inventorship is separate from the question of ownership.

An inventor is one who "conceives" and—either personally or through someone else—actually or constructively reduces the invention to practice. The conception of an invention is complete if the inventor is able to make a disclosure that would enable one skilled in the art to actually make the invention without extensive research or experimentation. One who merely constructs the invention based on the inventor's conception is not an inventor.

On the other hand, merely suggesting a desired result without any disclosure of the means by which the result is to be attained is not inventorship. If, for example, someone suggested to the Wright brothers that motorized flight would be desirable, but did not describe a means of accomplishing it, the person making the suggestion would not be an inventor—no operative or specific means of achieving the result were disclosed.

The claims of the patent are used as the standard for determining inventorship, be it an individual or a group. An illustration: Assume that a patent claim contains element A, which was invented by inventor X. Inventor X will be considered the sole inventor of that claim. Consider, however, a patent claim that includes a combination of element A (invented by inventor X) and element B, with B being added to A based on the suggestion of inventor Y. In this second case, inventors X and Y would be considered joint inventors. Each claim of the patent is analyzed in this fashion. Under current patent law, the inventors listed in the patent application are all those individuals who solely invented or co-invented even just one claim.

Prior to 1984, some case law rigidly construed joint inventorship to include only those inventors that worked together at the same time, made an equal contribution to the invention, or contributed to every claim of the invention. Thus, inventorship could be denied to a person who made only a slight contribution to the invention. With the 1984 amendments to the inventorship section (section 116) of the U.S. Patent Act, however, inventors may now apply for a patent jointly even though they did not physically work together at the same time, each did not make the same type or amount of contribution, or each did not contribute to the subject matter of every claim of the patent.

Failure to name the correct "inventorship entity" can result in the invalidation of the patent. Because of the harshness of this penalty, liberal correction procedures are available to remedy the improper naming of inventors. Under these procedures, inventors can be added, removed, or substituted in order to obtain the correct inventorship entity. The rules require that the error must have been innocent (i.e., made without deceptive intention). A further requirement is that the application to correct the inventorship must be diligently made after the discovery of the error.

To avoid potential problems, researchers, scientists, and engineers involved in the invention process are encouraged to cooperate fully with the patent professional in helping him or her get all the facts needed to make the correct judgment.