Joint 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... 

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). 

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. 

Occasionally courts speak about a single-idea invention, and there is a presumption that with such single-idea inventions, joint inventorship is unlikely. An example would be a known biological method for producing an antibiotic. The antibiotic yield is increased by, say, merely raising the temperature. It would be difficult to argue that this is a joint invention. 

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. 

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. 

The exact parameters of what constitutes joint inventorship are quite difficult to define. It is one of the muddiest... 

Invention is a mental act in which the originator conceives the patentable idea and provides a workable means to realize it. His status as an inventor does not require or forbid him to actualize the idea himself, which coworkers may do instead. Although they elevate the idea to practice, their efforts— prolonged, extensive, or successful as they may be—do not entitle them to share inventorship. Merely making the compounds of the invention does not suffice to earn this status, even if one of these substances becomes a bestselling medicine. Joint inventorship of patents is commonplace, however, but because each of the inventors substantively contributes to at least one claim. 

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