This is a second installment on the subject of inventorship.
Participating or contributing only to the reduction to practice of the invention is not sufficient to be deemed an inventor, even if the reduction to practice is the most time consuming, costly, and difficult part of the invention process. See Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998), cert. denied, 525 U.S. 923 (1998).
This is to be distinguished from a case where the invention as originally conceived does not work as it should and a technician reducing the invention to practice then devises a way to make it work. In that case, the technician may become an inventor (provided all of the other factors noted above are met) because the invention would not have been complete without the contribution of the technician.
In summary, an inventor is not someone whose only contribution is reducing an invention to practice by exercising ordinary skill in the art.
Claims by individuals that they should be listed as inventors, in inventorship correction cases, have a further hurdle. In such cases courts require independent contemporaneous evidence specifically corroborating claims of inventorship. “[C]orroborating evidence is essential and not optional in inventorship correction cases. Marketel Int’l, Inc. v. Priceline.com, 138 F.Supp.2d 1210 (N.D. Cal. 2001). Also, “[t]he burden of showing misjoinder or nonjoinder of inventors is a heavy one and must be proved by clear and convincing evidence,” Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997), cert. denied, 520 U.S. 1277 (1997). The standard for such evidence is a contemporanteous laboratory journal, with each page dated and signed by a witness.
