The Legal Definition of Inventorship
An inventor is a person who contributes toward conception of an invention defined by a patent claim. Who conceived the claimed invention and who merely reduced the invention to practice are threshold questions in determining inventorship.
Simply put, unless a person contributes toward conception of inventive subject matter of at least one claim in a patent application, they are not an inventor and should not be a named inventor on the application or any patents issued therefrom. This may be true even if the person works directly with the inventor to make their idea a reality because reduction to practice, per se, is irrelevant if the inventor has a complete conception of the invention and directs the work.
What Is Conception Of An Invention
Each named inventor must have formed a definite and permanent idea of one complete and operable feature of a patent claim to establish conception of the claimed invention.
Conception completes performance of the mental part of the inventive act, forming in the inventor’s mind of a definite and permanent idea of a complete and operative invention as it is thereafter to be applied in practice. It is established when
the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the exercise of extensive experimentation or the exercise of inventive skill, or
a disclosure of an invention is prepared that enables one skilled in the art to reduce the invention to a practical form without exercise of the inventive faculty.
An inventor does not need to know that the invention will work or appreciate the patentability of the invention for there to be complete conception. But, when establishing conception, the inventor must show possession of the claimed features and demonstrate that they were known to the inventor at the time of the alleged conception. In particular, the inventor must evidence a definite and permanent understanding as to whether or how, or a reasonable expectation that, the claimed invention would work.
What Is Reduction To Practice?
In principle, the line between conception and reduction to practice appears clear. For example, if you hire a draftsperson to prepare drawings of a prototype based on your descriptions and sketches and the draftsperson merely follows instructions without adding any new features or improvements, then they are merely reducing the claimed invention to practice and should not be named as an inventor. Or if you hire a 3D printing facility to make a prototype based on your technical specifications and they merely follow your instructions without deviating from the technical specifications or developing any new manufacturing methods, then they are merely reducing the invention to practice and should not be named as inventors.
In practice, the line between conception and reduction to practice is often quite fuzzy, particularly when working collaboratively with others because difficulties arise when trying to distinguish between
those who contributed something toward conception of invention from, such as a physical structure or an operative step, and
those who merely acted under the direction and supervision of others without contributing anything toward conception.
A degree of delegation is acceptable. For example, inventors need not personally construct and test their invention if the work is done on their behalf and does not require the exercise of inventive skill, such as when a skilled mechanic carries out details of a plan devised by the inventors. Questions of inventorship may nonetheless arise if it becomes clear that the inventor did not have possession of each and every claimed feature of their invention before establishing a plan for reducing it to practice. In the previous example, the skilled mechanic might be a joint inventor of some features if the original inventor was only able to obtain possession of those features by deviating from their plan at the direction of the mechanic.
What Is A Joint Inventor?
A person who shares in the conception of a claimed invention is a joint inventor of that invention.
Joint invention requires a similar showing of conception for each named inventor. Each joint inventor must evidence their unique contribution toward conception of a patent claim or a claimed feature thereof. Suggestions from general knowledge regarding the anticipated functions or properties of a claimed invention is insufficient to confer inventorship status. One who merely suggests an intended result (to be more efficient!), rather than specify a particular means of accomplishing it (…by modifying a structure of…), is not a joint inventor.
Inventors may apply for patents jointly even though they did not physically work together or at the same time, did not each make the same type or amount of contribution, and/or did not each contribute to the subject matter of every claim of the patent. Accordingly, if a person works on only a small part of an invention remotely and that part is covered by one claim of patent application, then that person should be named as an inventor.
What If My Invention Narrowly Improves Upon Another Invention?
With a few exceptions, most any improvement that is novel and non-obvious in view of the prior art may be patentable, even if it is narrowly focused and cannot be practiced without infringing a patent claim of another inventor. Despite any similarities of subject matter, it is not necessary to name any third parties as an inventor unless they directly contributed toward conception of the improvement in question.
An accidental and unappreciated duplication of some aspects of an invention by a first inventor may not defeat the patent rights of a second inventor. This is true even though the second inventor recognized additional inventive subject matter and drafted a patent claim later in time. The result may be a narrower claim that is nonetheless valid. In such instances, establishing conception may require evidence proving which inventor made and understood the invention to have the features that comprise the inventive subject matter at issue.
What Happens If Conception Is Not Complete?
Simultaneous conception and reduction to practice may occur when an inventor presents an idea that was not fully conceived, requiring direct support from a third party (e.g., a contractor) to complete conception and reduce the invention to practice. This is the skilled mechanic example noted above. For this limited exception to apply, the mechanic must have contributed something unique toward conception, such as by designing a new physical structure or providing code for a new operating step that goes far beyond the inventor’s original idea.
On rare occasions, conception and reduction to practice may occur simultaneously in unpredictable technologies where the inventor does not have reasonable certainty that performance of a claimed process would yield a desired result until after that process has been performed. This typically happens in chemistry and biology where conception is not possible until after testing. Under these circumstances, conception may be completed by a successful test and otherwise incomplete because the inventor cannot evidence possession due to uncertainties that undermine the specificity of their idea until it cannot be fairly described as a definite and permanent reflection of the complete invention as it will be used in practice.
Can An Artificial Intelligence Be Named As Inventor?
The (current) answer is no. The patent laws of most countries, including Canada, Europe, and the US, are specific to human inventors. This is a contested question and one to watch.
Why Does Accurately Establishing Inventorship Matter?
It is critically important to answer inventorship questions correctly because it affects validity.
It is also important to answer these questions early because the costs associated with mistakenly naming someone as an inventor on a pending patent application are minimal during prosecution, when changes are readily made. For comparison, the same mistake may be fatal to an issued patent as a basis for stalling litigation with inventorship challenges and/or invalidating the patent altogether.
Is Inventorship The Same As Ownership?
No. Inventorship and ownership are different and should not be conflated.
Inventorship is fundamental to patent law because an inventor is the person entitled to patent rights. Absent a written agreement to the contrary, a named inventor is the owner of the patent rights. If there are joint inventors, then each joint inventor is a co-equal owner of the patent rights, meaning that each joint inventor can independently make, use, offer to sell, license, or even sell the patent rights unilaterally, without asking the other joint inventors.
Ownership is fundamental to owning any property, including patent rights. An inventor may transfer some or all their patent rights to another person or entity using a written agreement such as an assignment agreement or a licensing agreement. This is commonly done for a multitude of reasons. For example, it is something that most employees and contractors are contractually obligated to do when performing work for others. For joint inventors, it is also a useful way to consolidate ownership of the patent rights and prevent unilateral actions by one of the joint inventors.
The analysis for inventorship and ownership is different. Assessing inventorship requires a fact-based inquiry that cannot be limited by contract. Ownership can and often is modified by contract, such as with a written agreement. If there is a dispute about ownership, then it should be settled by contract and not with inventorship because refusing to name someone as an inventor of a pending patent application for the purpose of limiting their ownership may be fatal to any patent issued therefrom as a basis for stalling litigation and/or invalidating the patent.
Conclusion
Because it may affect validity, best practice is to take inventorship very seriously. This includes (i) communicating with inventors to confirm their contributions, (ii) building a factual record (e.g., emails, meeting notes, etc.) that can be used to define and defend them, and (iii) taking due care to avoid improperly naming any person as an inventor.
With respect to ownership, best practice is to (i) establish ownership early with a written assignment agreement executed by each inventor, particularly for joint inventors; (ii) use separate agreements to define economic terms so as to avoid complicating the patent process; and (iii) not conflate inventorship with ownership because doing so will likely affect validity.
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Thank You for Reading!
Matthew Leaper & Associates can help you resolve these and related issues in a professional, efficient manner. Mr. Leaper and his team of international associates know how to effectively communicate with the USPTO, have extensive knowledge of its requirements and timeframes, and are well versed in all phases of the patent process, making us well suited to help realize your ambitions.
