Inventorship, improper

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. 

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... 

Fact situations which make a person a sole inventor and which make two or more persons joint inventors, in the eyes of the law, are discussed. The concept of joint inventorship is contrasted with situations where others are "extended technical arms of the inventor." Problems such as the synthesis of a new compound by a chemist and discovery of a utility by a person trained in another discipline are presented, including selection of an old compound by a chemist for testing or a particular utility and discovery of a related utility by another person. Observations are made on the likelihood of a patent being held invalid under different improper inventorship situations. 

The selection of a proper inventor entity is still a serious consideration despite the liberality in changing inventors permitted by the statute. The validity of a patent is most in danger with a single inventor named as a wrong inventor or if any inventor entity, sole or joint, is deliberately misnamed for any reason. The courts in general take a more serious view of an omitted joint inventor rather than one added who is not in fact a joint inventor. There is heavy presumption that the inventors named in the patent are the correct ones. Many courts do not like to see a patent attacked because of improper inventorship and such courts regard this merely as a technical defense. In general, if there is any doubt, it is recommended that the patent solicitor select a joint inventor entity rather than a sole inventor entity. 

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