Who Do We Name as the Inventor?

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Your company is planning to file a patent application. That’s a great idea! At some point in the process, your patent attorney will ask you who to list as the inventor or inventors on the official paperwork. So, how should you answer that question?

The main thing to know is that it’s not a matter of opinion or personal choice. Someone either meets the definition of an inventor or they do not. Sometimes, for example, a company owner naturally thinks he should be listed as the inventor. After all, it’s his company. He’s paying the bills. However, it turns out not to be that simple, and there are significant legal consequences if you fail to name the proper inventor(s).

In the United States, “invention” involves two steps: (1) conception of the idea; and (2) reduction of the idea to practice. An “inventor” is a person who completes the conception step.

This has been interpreted as follows: “Making the invention requires conception and reduction to practice. While conception is the formation, in the mind of the inventor, of a definite and permanent idea of a complete and operative invention, reduction to practice requires that the claimed invention work for its intended purpose.” Solvay S.A. v. Honeywell International, 742 F.3d 998, 1000 (2014).

Who is an Inventor?

An inventor must contribute to the conception of the invention. Since the invention is technically limited to what’s listed in the claims of a patent application, an inventor is a person who conceives the subject matter of at least one of the claims. The patent can have two or more inventors if they collaborate to produce the invention.

Who is not an Inventor?

A person who only contributes to reducing the invention to practice is not considered to be an inventor. For example, these are probably not inventors:

  • a technician who only conducts experiments or assembles the invention,
  • a person who only supervises or manages a project that creates the invention,
  • a coder who only creates the software version of the invention, under the inventor’s guidance,
  • a person who only contributes an obvious element to the invention,
  • an owner of a company who hires the inventor, or
  • a person who drafts the drawings for the invention.

Can Inventorship Change During Patent Prosecution?

The inventorship may change during the examination process. For example, one or more claims may be canceled or edited during the patent examination. If one of the original co-inventors no longer contributes to any claims due to these kinds of changes, then the official inventorship for the application should be changed by deleting that inventor administratively.

Can We Fix an Error or Mistake Regarding inventorship?

Inventorship can be corrected when an application is pending, or after a patent is issued. A request must be filed to correct the inventorship, and different document requirements and fees are involved depending on the timing. According to USPTO data, it takes over 100 days (up to 190) for one of these petitions to be granted.

Are There Any Consequences of Incorrect Inventorship?

Unless the incorrect inventorship is remedied, the patent can be invalid. Further, intentional failure to name collaborating joint inventors may be considered fraud, resulting in an unenforceable patent. Also, if a legitimate inventor was not named, intentionally or otherwise, then that person might very well have an ownership right in your company’s patent.

The last thing you want is to try and enforce your patent, only to find that the real inventor wasn’t named. And worse – she’s now working for the company you were going to sue!

Hopefully, the best practice is clear: make an effort to understand the rules and determine the correct list of inventors as early in the process as possible. If you have any questions about inventorship, please feel free to contact me or any of our patent attorneys here at the firm.


Photograph © 2016 Dave Bourgeau

Blog Post © 2019 Kolitch Romano LLP

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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.