Who is an Inventor?
Inventorship and Authorship are different yet commonly confused. Inventorship is defined by the US Patent & Trademark Office (USPTO) and is much narrower than authorship. It is essential that the Inventorship on our filings is correct as it can affect the owner’s ability to enforce a patent.
To identify inventors in the early stages, we need to understand the innovative contribution. Initially, we list those that provided unexpected results that define the invention. In the end, Inventorship is define by the allowed claims, so if/when claims are adjusted or removed, an inventor that was listed earlier will be removed from the patent when their contribution is no longer in the claims list.
Here are some common guidelines for inventorship in the beginning.
An inventor is a person who conceives** the subject matter of at least one claim of the patent and/or inventively reduces the invention^^ to practice.
**“Conception is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation” (Burroughs Wellcome Co. v Barr Labs, Inc.).
^^ Inventive Reduction to Practice requires further innovation of initial inventive idea (something unexpected beyond that of ordinary skill- see below).
One patent may list two or more persons who collaborate to produce the invention through aggregate efforts, i.e..
In other words, they:
- contribute in some significant manner to the conception or inventively reduces it to practice;
- make a contribution to the claimed invention that is not insignificant in quality (contributed something unexpected), when that contribution is measured against the dimension of the full invention; and
- do more than merely provide well-known concepts and/or the current state of the art to the real inventors (Plastipak Packaging Inc. v. Premium Waters Inc.)
Sometimes it is easier to define what an inventor is not. An inventor is not:
- Someone whose only contribution is reducing an invention to practice by exercising ordinary skill in the art. (also see 2)
- In other words, they do not provide any unexpected solutions but merely performs actions that are asked of them. This is very common with students; they spend hours & hours working but only do what they were told…nothing unexpected. They qualify as an author but not an inventor.
- Someone who simply performs experiments or assembles the invention. (also see 1)
- Again, this is perfect for authorship, but falls outside inventorship.
- Someone whose only contribution is an obvious element to the invention.
- Yes, we plan to add Bluetooth to a communication device.
- 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.
- Invention requires ‘how’ information. Gene Rodenberry does not get to be on the transporter patent when it comes.
- A person who only discovers the problem (unless he contributes to the solution).
- Common with leaders who only define the problem but not the solutions do not qualify as inventors automatically.
- A person who merely provides a suggestion or improvement but who does not work to fit the suggestion or improvement into the invention.
- A second inventor of the subject matter of the invention who did not collaborate with a first inventor of the subject matter of the invention.
- The US is the first to file country now. Just because you invented something first does not mean you get to be on the other person’s patent (unless they improperly stole your idea from hearing it from you… this is what you are swearing to when you sign a declaration)
- The supervisor or professor who merely leads the group and/or defines the problem the invention solves.
The Office of Commercialization (OTC) at Cowboy Innovations have experts that can provide guidance to determine who is an inventor. Please reach out to us if you have any questions or concerns.