Often, participants in a startup venture wish to confirm the “ownership” or participation status be seeking to be named in a patent application. These participants may be making valuable contributions to the venture, but they may not have technical backgrounds and have not contributed to the inception or creation of a working model of the invention.
In other cases, an inventor is hesitant to add others to the list of inventors on the application for patent. This can arise when on senior person in the impetus behind the invention.
In both cases, serious problems can be created by failing to properly name all the inventors. See the link to the following article “Who is the Inventor”
As with most other issues related to patenting, the answer to whom should be listed as an inventor is not particularly clear. Also the consequences, although severe, are lessly clearly applied.
The case law states that an inventor is a person that participates in the mental part of the inventive act, i.e., conception of the definite and permanent ide of the invention as it is thereafter reduce to practice. Participation in conception rather than the reduction to practice is key. Sewall v Walters, 21 F.3d 211,415 (Fed. Cir. 1994).
Recall that there are two steps for creation of a patentable invention, i.e., first, conception of the idea and second, reduction to practice. (Constructive reduction to practice can be achieved by drafting a thourgh description of the idea sufficient to allow or enable a person skilled in the art to duplicate the conceived invention.)
In 2013, the America Invents Act (AIA) promolgated an unhelpful definition of inventorship.
“The term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who inented or discovered the subject matter of the invention.”
The definition is circular.
Under pre-AIA law, failure to correctly name the inventors could result in the patent being deemed invalid. It is not 100% clear if that sanction would apply to applications filed after September 16, 2012 (AIA). However, intentionally failing to name a co-inventor could very likely cause this result.
Note that inclusion of one or more co-inventors has its own complications. Each co-inventor has an undivided proportional ownership in the patent. Each co-owner can exploit or monetize the invention without any duty to account to any other co-inventor. This however is to be subject of a separate blog.
The conclusion is that care must be taken to correctly name all of the inventors and to exclude individuals who do not qualify. A business agreement is the appropriate forum to decide how any profit and use of the invention (patent) is to be allocated.
The following is a summary of who is and who is not an inventor:
An inventor is:
• A person who conceives the subject matter of at least one claim of the patent.
• Two or more persons who collaborate to produce the invention through aggregate efforts.
An inventor is not:
• Someone whose only contribution is reducing an invention to practice by exercising ordinary skill in the art.
• A technician who simply performs experiments or assembles the invention.
• The supervisor or department manager of the person who conceived the invention.
• Someone whose only contribution is an obvious element to the invention.
• Someone whose only contribution is participation in consultations about the invention before or after conception of the invention.
• A person who only conceives of the result to be obtained but not the idea of how to achieve it.
• A person who only discovers the problem (unless he contributes to the solution).
• A person who merely provides a suggestion or improvement but who does not work to fit the suggestion or improvement into the invention.
Copyright David McEwing, 2019