Technology Transfer

Determining Inventorship

Introduction
 

Inventorship has strict legal meaning under the laws and regulations of the U.S. Patent System. The law specifies that only those who have made independent, conceptual contributions to an invention are inventors. Patent attorneys apply the law to establish who conceived of an idea and to what extent. Patent attorneys can also apply the law to invalidate a patent when (i) the patent contains the name of an individual who did not contribute to the conception of the idea or (ii) the patent lacks the name of an individual who contributed to the conception of the idea.

What Constitutes Inventorship?

The United States Code authorizes anyone who invents or discovers inventive subject matter to obtain a patent. An inventor is one who, alone or with others, first invents a new and useful process, machine, composition of matter, or other patentable subject matter. The most important consideration in determining inventorship is initial conception of the invention. The courts have ruled that, unless a person contributes to the conception of the invention, that person is not an inventor. Conception of the invention under patent law has been defined as the "information in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice." An invention is complete and operative "if the inventor is able to make a disclosure which would enable a person of ordinary skill in the art to construct or use the invention without extensive research or experimentation".

After the patent issues, the inventor(s) or their assignee(s) may prevent others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States for a period of twenty years from the date of filing.

The patent application must be filed or authorized to be filed by the inventor(s). The inventor may be a single person or two or more individuals. If only one individual contributes to the conception of the invention, the invention is a sole invention. If, however, two or more individuals contribute to the conception of the invention, the invention is a joint invention and each inventor is a co-inventor. Each co-inventor is considered to have the same legal interest in a joint invention as any other co-inventor. Two or more individuals may be co-inventors to the conception of the invention even though they did not work together on the invention at the same time or in the same place or make the same type or amount of contribution to the invention. The joint inventor is only required to make an inventive contribution to at least one claim in the invention.

Inventorship is strictly a legal question that a patent attorney must determine. When the University receives an invention disclosure with two or more individuals listed as contributors to the conception of the invention, the University may ask its patent attorney to determine inventorship. The attorney will speak with or meet with each of the co-inventors to explore who conceived of the invention and if one skilled in the art could make the invention without extensive research or experimentation. Note, however, that an individual who merely suggests an idea without the means of accomplishing the task is not a contributor to the conception of the invention. Additionally, an individual who has simply followed the instructions of another is not a contributor to the conception of the invention. The University will normally accept the patent attorney's determination and advice.

Correcting Inventorship
 

Inventorship may be difficult to determine when the patent application is filed because the scope of the claims may change throughout the prosecution of the patent. Since failure to name a contributor or naming of an incorrect contributor can result in the invalidity of the patent, the patent may be amended to add the additional co-inventor or remove the incorrect co-inventor so long as the error arose without any deceptive intent.

The Distinction between Inventorship and Authorship
 

As you can see, inventorship is different from authorship. Papers and journal articles that disclose the results of research conducted at the University typically recognize everyone that contributed to the project. This is different from a patent application, which may legally only contain the names of the actual contributors to the conception of the invention. Thus, for legal reasons, the status of co-inventor may not be conferred merely as a reward for hard work, friendship or even outstanding science. This means that colleagues, students, research assistants, technicians, etc., and those who supervise them, even though they may gather essential data or construct a practical embodiment of the invention, are not co-inventors unless they have made an inventive contribution. Legally, if the patent application does not contain the name of a contributor or contains the name of an individual who was not a contributor, the patent may be invalidated.

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The purpose of this memo is to help you understand how a premature publication can undermine the validity of a patent. This note does not contain definitive legal advice and should not be used as a substitute for the advice of your lawyer or patent attorney. For additional information or for answers to specific questions, please call the Office of Research and ask for a Technical Transfer person.

Last Updated: 3/23/15