Why does patent inventorship matter?
The true inventor of an invention owns the initial patent rights covering that invention. There is no work for hire doctrine in patents, meaning that an employer or commissioner is not considered to be the inventor for a work created by an employee as part of his or her job. Inventors do not have the ability to grant others inventorship. Patent inventorship is strictly dictated by law and does not rely on common law doctrines (e.g. employed to invent). Ownership, nevertheless, can be transferred pre-invention or post-invention by written contract (i.e. employment agreement). Thus, since only an inventor may apply for a patent with the United States Patent Office, correct inventorship is extremely important to the patent application process.
What are the consequences of improperly naming the inventors to a patent?
There are two major consequences can result:
(1) Improperly naming inventors may render a patent unenforceable or cause procedural problems down the road in obtaining and potentially enforcing the patent.
- Only a true inventor is entitled to a patent. A patent derived from someone other than a named true inventor is invalid.
- Under the duty of candor, the patent applicant must disclose requested information to the Patent Offices. If relevant information is intentionally withheld (i.e. wrong inventors named), the patentee may lose entirely the right to enforce the patent.
- Once a patent issues, the named inventors are presumed as correct and as the only inventors (Hess v. Advanced Cardiovascular Sys., Inc.). If a wrong inventor, nevertheless, files and prosecutes the patent, the correct inventor may petition the Patent Office to issue a certificate of correction that names the proper inventors. Omitted inventors may similarly request to correct the patent’s inventorship (35 U.S.C. §256). Improperly listing all of the true inventors may also lead to disputes in patent litigation over the declaration of inventors or deter potential investors.
(2) Second, because the inventors are the initial owners of patent rights, failing to name a true inventor may mean that no single entity owns all the exclusive rights to a patent. For example, a startup is an assignee (and therefore the owner) of a patent naming a single inventor. A second person, however, also contributed to the invention covered in that patent, and should have been named as a co-inventor on the patent. If that second person has not assigned their rights to the startup company, then beyond the procedural implications of improper inventorship, there is also a major problem concerning the ownership of the patent – the startup is not the sole owner of the patent rights. The patent is jointly owned by the startup and the second unnamed inventor (or perhaps the employer, or other assignee of the unnamed inventor’s patent rights). Leaving such loose ends in the state of the startup’s patent portfolio will often deter investors from investing in the company.
What amounts to inventorship?
Under patent law, the inventor of the eventual patent covering a technology is the person who conceived of a solution claimed in the patent. Conception, and therefore invention, is defined as the formation in the mind of the inventor of a definite and permanent idea of a complete and operative invention as is thereafter to be used in practice. To be considered the inventor, one is not required to actually build a prototype of the invention. Rather, the inventor must only be capable of describing the invention in enough detail that people in the field can understand how to reduce it to practice.
What does not amount to inventorship?
Identifying a problem does not result in inventorship. Deriving an idea that is not definite or permanent, furthermore, does not render inventorship either. Sufficient details about the solution must be made available to allow others familiar in the art to reduce the invention to practice. A person, for instance, does not invent a time machine until he or she can describe precisely how the time machine would work. To be a patent inventor, one must significantly contribute to at least one claim in the patent. Inventing something not claimed in the patent affords no patent rights. Merely reducing an invention to practice (i.e. building a prototype), contributing labor, or conducting experimentation does not alone equal invention; one must conceive a new aspect of the invention. Likewise, neither supervising inventive activity nor funding the development of technology or inventive activity amounts to inventorship, although ownership may be assigned by contract.
The listed patent claims determine inventorship. Contributing to the conception of an unclaimed invention does not amount to inventorship. By contrast, if an inventor only contributes to a single claim in a patent of multiple claims, he or she will enjoy co-ownership of the entire patent. Under 35 U.S.C 262, this means that each of the joint owners of a patent may “make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to other owners”. Stated otherwise, inventors are not required to contribute to the entire invention or to every claim of the patent to have full patent co-ownership. A significant contribution to just one claim is enough to vest an undivided interest in the patent as a joint inventor.
Alice, a lung transplant surgeon understands through experience that many patients die waiting for a compatible organ. Alice communicates this problem to Ben, a biomedical engineer, who subsequently conceives in his mind a new organ printing system that can provide patients with customized lungs using a 3-D printer. Ben does not actually build a prototype (print a lung), but is capable of writing down what this invention would generally look like so that only ordinary skill would be necessary to make a working example of the invention. Ben reveals this idea to Cindy, another biomedical engineer, who spends 3 full days in the printing lab actually printing a lung prototype for this transplant system.
In this situation, inventorship of the eventual patent covering this lung 3-D printing system belongs solely to Ben, the person who conceived of the solution.
Building off of Example 1, as Cindy sets out to print a prototype lung, she determines that the refining and customizing the printed organ with a laser would result in fewer organ rejections.
In this case, if Cindy’s modification is reflected in the eventual patent claims, she will be considered a joint inventor with full rights to the patent. Consequently, in order for a company to be the sole owner of the patent rights, that company would need to obtain written assignments from both Ben and Cindy, the two inventors of the technology.
Thus, inventorship is complicated but important because it impacts ownership. Ownership/inventorship questions can jeopardize patent enforceability and can, for example, scare investors away from investing in a company.