It is absolutely essential that the correct inventor (or inventors) be listed in the patent application. Naming the wrong people, or naming someone who was not an inventor, can be fatal to the patent. It is important to note that “invention” is considered claim by claim. It is possible that different claims might have different inventors, and that some inventions disclosed in the specification might not even be claimed.
In the United States, invention is a two-step process:
1. Conception of the idea or subject matter of a patent claim or claims; and
2. Reduction of the idea to practice, either constructive or actual.
Determination of proper inventorship focuses almost exclusively on the conception step, requiring the identification of each person who conceived the idea or ideas of each patent claims. Conception is normally defined as “the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice.” Burroughs Wellcome Co. v. Bar Labs., Inc., 40 F.3d 1223, 1227-1228 (Fed. Cir. 1994).
The phrase “definite and permanent” means that only ordinary skill would be necessary to reduce the invention to practice, or make a working example of the invention, without extensive research or experimentation. Therefore, conception is complete when an idea is sufficiently definite and permanent to permit one with ordinary skill in the field to reduce it to practice without undue experimentation. Conception must be complete and must include every feature of the subject matter claimed in the patent.
Because the Patent Act requires that the disclosure be sufficient to enable one with ordinary skill in the field to make and use the invention (e.g., be “enabling”), an adequate disclosure is said to constitute a “constructive reduction to practice.” In other words, actual reduction to practice is not essential to inventorship, and the contribution of the skilled mechanic in reducing the invention to practice by itself is not considered to be an act of invention unless it is coupled with conception.
Because an inventorship determination focuses on the invention claimed and not merely described in a patent, typically the first step in an inventorship analysis is to determine the scope and meaning of the claims. Once the exact subject matter of the patent claims has been determined, the appropriate individuals can be determined, that is who conceived each of the claims that represent the invention.
A patented invention may be the work of one or more inventors. Joint inventorship occurs when two or more people collaborate on an invention, with each person contributing to the subject matter of the patent claims. A joint inventor is not required to contribute to the entire invention or to every claim of the patent. A significant contribution to even one claim in the patent is enough to make someone a joint inventor. The law specifies no lower limit to the amount that each individual is required to contribute to qualify as a joint inventor, only that the contribution made be significant and inventive. A contribution is considered significant when it helped make the invention patentable, such as making the invention novel or nonobvious.
A person does not qualify as an inventor simply because his or her contributions appear in the claims of the patent because many claim elements may not be novel or may be obvious. In addition, an individual does not qualify as a joint inventor by merely explaining well known principles or the current state of the art. For example, in Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976 (Fed. Cir. 1997), cert. denied, 520 U.S. 1277 (1997), an engineer for a plastics manufacturer sought to be added to a patent for a heart catheter. The engineer identified potential materials for the catheter and explained the properties of the materials to the inventors who were heart surgeons. The court of appeals found that the engineer did not qualify as an inventor simply because he suggested materials and explained their properties to the inventors. The materials and their properties were well known and could have been found in textbooks. According to the court, the engineer did no more than a skilled salesman would do in explaining how his employer’s product could be used to meet a customer’s requirements.
More on inventorship next time . . .