Determining Inventorship

Now that we have examined the important relationship between patent inventorship and initial ownership as well as the relationship between correct inventorship and patent validity, we can better appreciate the importance of determining inventorship correctly in the first place, so as to avoid any uncertainties that accompany a patent with improperly listed inventors. Unfortunately, inventorship determination is one of the muddiest concepts in the muddy metaphysics of patent law it deigns to draw clear boundaries around subject matter that is often amorphous and subjective.24 Inventorship issues typically arise when joint inventorship is being considered and the question revolves around whether one or more individuals contributions qualify them as joint inventors.25 

In this vein, it is vital to realize that getting inventorship right begins with understanding that the issued claims determine the scope of the inventorship inquiry. If an individual contributed material that was part of the patent application but ultimately was not important to the issued claims, she is not an inventor.26 Once the subject matter of each claim is determined, that subject matter is then compared to each prospective inventor s contribution to see if that contribution is inventive. The inventive contribution to the claims thus holds the key to unlocking this mystery of inventorship, and as we will soon see, not all contributions to the invention are inventive contribution not all contributions are created equal. 

As we learned earlier, inventions can be broken down into two parts conception and reduction to practice. Conception has been defined as the complete performance of the mental part of the inventive act. 27 One might think of the conception portion of the invention as the idea to do the thing that eventually becomes the invention. Sometimes the bulb burns very brightly in an individual s head, and the conception for an invention comes about in a single, well-illuminated moment. Other times, the bulb glows only intermittently, perhaps borrowing its light from several individuals over a course of time. As a result, it is often the case that a claim to an invention 

24 The exact parameters of what constitutes joint inventorship are quite difficult to define. It is one of the muddiest concepts in the muddy metaphysics of the patent law. Mueller Brass Co. v. Reading Industries, Inc., 352 F.Supp. 1357, 1372 (E.D.Pa. 1972). 

25Note that 35 U.S.C. 116 provides that Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did make the same type or amount of contribution, or (3) each did not contribute to the subject matter of every claim.  

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An interference is a contested action in the U.S. PTO to determine inventorship between two or more patent appHcants or between at least one patentee and one or more patent appHcants. The principal contest in an interference concerns the right to claim the invention. The interference action results from U.S. law, which awards patents to the first inventor, generally irrespective of patent appHcation filing date. In the simplest situation, an interference occurs when a pending appHcation discloses and claims the same invention which is claimed in at least one other copending appHcation or issued patent. 

As we saw in the previous section, properly determining inventorship is important because inventorship determines initial ownership and all of the attendant financial considerations that go with it. Listing proper inventorship is also critically important because improper inventorship means that the inventors listed are not the actual inventors of the subject matter. If you are thinking to yourself, so what then you need to recall that 102(f) of the U.S. patent code provides that A person shall be entitled to a patent unless. ..he did not himself invent the subject matter sought to be patented (emphasis added). In 102(f), the word he refers to the inventive entity (all of the inventors) named on the patent.10 Thus if an inventor has been left off the patent (referred to as nonjoinder of a proper inventor), then the listed inventors did not invent the subject matter of the claimed invention entirely themselves since they did not invent all of the subject matter of the claimed invention.11 Such a patent is invalid. Likewise, if a patent is granted that lists one or more persons who were not actually inventors, then he would not have invented all of the subject matter sought to be patented since some of the listed inventors would not actually be inventors (this is referred to as misjoinder ). Such a patent is also invalid. If this seems a harsh remedy for what can be a difficult determination to make (as we soon will see), then you will be relieved to know that mistakes in inventorship can be corrected both before and after issuance of the patent. 

Although it takes both conception and reduction to practice to make an invention, the two parts are not treated equally in terms of determining inventorship. In fact, a person cannot be an inventor unless they contributed to the conception of the claimed invention because conception is the touchstone of invention. 29 However, the mere wish for the achievement of a particular result absent anything else is unlikely to qualify a person for inventorship. As was stated in a federal court decision where this issue was considered ... 

If someone else comes up with the idea for some new compounds, but you re the one who actually synthesize them, he s the inventor and you re not. It is possible that, if the synthesis proved unexpectedly difficult and those compounds could only be made by a very different route or with a critical reaction modification that you came up with, you may well have made an inventive contribution that qualifies you to be listed as a co-inventor, but that s if and only if the process you developed ends up being claimed. Although you can try presenting your case, once again it s the patent attorney who determines inventorship. 

Inventorship determines initial ownership of the claimed invention and thus properly determining and listing inventorship is in some cases every bit as important as properly listing the names of the owners on a deed to a very valuable property. The ownership... 

While we have seen that many of the ownership issues that arise from inventorship may be obviated by carefully assigning the rights to the invention in advance, this does not completely eliminate the need for proper determination of inventorship. For example, contracts assigning invention may still allow for the inventors to receive a certain percent of royalties should the invention become profitable (e.g., university inventors). However, as we will see in the next section, proper determination of inventorship goes beyond the issue of ownership proper inventorship goes right to the heart of the validity of the patent itself. 

Curt Well, basically the idea for this template was mine. I also came up with the main chemistry plan, though Mike did come up with the other scheme that provided the indoles. Are you trying to determine the inventorship ... 

Patent attorney Well not so fast, we haven t filed the case yet. We are just doing the inventorship determination. ... 

In most of the world, inventorship of a patent may be relevant as to who owns the rights but it is not relevant to the validity of the patent. In fact, in some coimtries the inventor may never be mentioned or even appear on the patent. Again, the one important exception is the United States, where, as noted above, the inventor or inventors must file the patent application. If the wrong inventor or inventors intentionally apply for the patent, grounds for declaring the U.S. patent invalid are raised. Therefore, the proper inventors of the claimed invention are always determined according to the requirements of U.S. law. 

It must be remembered that inventorship is different from authorship. Inventorship is based on legal requirements and must be strictly followed, whereas authorship is more arbitrary. The determination of inventorship is based on first inspecting the invention and determining what person or persons made an inventive contribution to the conception and reduction to practice of this invention. Conception is the mental steps taken to develop the invention. Reduction to practice is the physical process of taking the idea to the completed working invention. When two or more inventors (joint inventors) are involved, each must contribute to the claimed invention, but each is not required to have made a contribution to each claim of the patent. 

Inventorship determination is not always straightforward and simple in today s research environment. However, to make these correct determinations, certain questions are asked. Did the person do only routine work or experiments as directed by another, or did he or she contribute something more Was the invention completed because of the specific activity of this person Did this person proceed beyond specific directions In today s modern pharmaceutical research atmosphere, in which teams are involved in the discovery and development processes, the patent attorney may find the determination of the correct inventorship a very difficult aspect in the preparation of a patent application. In a 1972 decision, U.S. District Court Judge Newcomer made the following observation ... 

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