Getting A Patent: Who Should be Named as An Inventor?

By William Honaker
October 12, 2020

“What’s important to understand is that you must include as named inventors anyone who conceived of an invention in any claim – even dependent claims.”

inventors - https://depositphotos.com/purchased.html?backURL%5Bpage%5D=%2Fstock-photos%2Flarge-group-of-people-lightbulb.html%3Ffilter%3Dall“A riddle, wrapped in a mystery, inside an enigma.” – Winston Churchill

Every time a patent application is filed, we have to ask, “Who are the inventors?” It is a simple question, but the answer can be complicated. And there can be severe consequences if you get it wrong. You could lose your patent.

As the Grail Knight in the Indiana Jones movie stated so well, “You must choose, but choose wisely.”

Who is an Inventor?

So, what does it take to be an inventor? The critical question is: Who conceived of the invention that is claimed?

As you know, patents typically have a number of claims broken down into independent and dependent claims. So, you have to look at each of the claims and determine who conceived the invention. There can be cases where different inventors conceived different parts of the invention in different claims.

What’s important to understand is that you must include as named inventors anyone who conceived of an invention in any claim – even dependent claims.

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But What does Conception Mean?

“Conception is the formation in the mind of the inventor, of a definite and permanent idea, of the complete and operative invention, as it is hereafter to be applied in practice.”

Let’s break this down. There are four requirements in this statement.

Conception is:

  1. The formation in the mind of the inventor
  2. Of a definite and permanent idea
  3. Of the complete and operative invention
  4. As it is hereafter to be applied in practice.

When is an idea definite and permanent?  Courts have told us that an idea is sufficiently definite and permanent when:

  1. Only ordinary skill would be necessary to reduce it to practice
  2. Without extensive research or experimentation

An Easier Definition

Here is an easier way to think about who the inventor of a particular claim is: whoever figured out the complete invention (this can be multiple people) and they didn’t need to experiment or consult experts.

This gives you something that’s a little clearer to work with when trying to answer the question, “who are the inventors?” You want to determine who figured out what’s described in a particular claim, and who had it figured out enough so as to not need further experimentation or consultation with experts.

Of course, you’ll still need to talk with your attorney, but this gives you some insight into the answer.

Now a Little More Guidance

A joint inventor is not someone who merely assists the actual inventor after conception of the invention. One who simply provides the inventor with well-known principles, or explains the state-of-the-art without ever having “a firm and definite idea” of the claimed combination as a whole, does not qualify as a joint inventor.

Moreover, depending on the scope of a patent claim, one of ordinary skill in the art, who simply reduces the inventor’s idea to practice, is not necessarily a joint inventor, even if the specification discloses that embodiment to be important.

An Example

Let’s say I’m interested in purchasing a Gorilla Pod stand for my smart phone. I suspected they might have patents, so I looked them up, and they do.

Their patent has three inventors and ten claims. For our purposes, we will focus on claims #3 and #4, which add the idea of using a resilient material on the gripping surfaces. Assume that the named inventors didn’t specifically say they want resilient material on the gripping surfaces, but someone else offered that suggestion, would they be an inventor?

In my opinion, no. They would only be providing well-known principles of using resilient material to grip.

But claims #5 and #6 require that the gripping section have two fingers. Having two fingers seems to go more to the conception of the invention. Having two fingers allows it to fold compactly. In my opinion, whoever conceived the idea of having two fingers would need to be named as an inventor.

The Takeaway

There are specific requirements to determine who should be named as an inventor on a patent. It is a tough question to answer, but considering who was involved in figuring out the complete invention to the point that it didn’t need further experimentation or consultation with experts, will get you very close.

Stay tuned for my next article, in which I will discuss the severe consequences of not naming all inventors, and how to avoid them.

Image Source: Deposit Photos
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Copyright:tai11 

The Author

William Honaker

William Honaker is a Member in Dickinson Wright PLLC in Troy, Michigan. He has 30 years of intellectual property experience evaluating patents, trademarks and copyrights, along with advising clients on the protection of inventions, trademarks and copyrightable subject matter, with a focus on helping clients avoid unnecessary litigation.

For more information or to contact William,please visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 5 Comments comments. Join the discussion.

  1. Autrige Dennis October 12, 2020 12:56 pm

    Thank you for such a wonderful article. I’ll be sure to share this with my clients. As a patent illustrator at ascadex.com, I love to help inventors bring their ideas to life through my patent drawings. I’ll look for creative ways to help them explain the invention well through my patent drawings however, I’m very careful that I don’t fill in the most important blanks of the invention out of my own ingenuity. I’ll often ask the inventors to show me how a certain process will fit or works before expounding on it.

  2. ipguy October 12, 2020 9:09 pm

    “A joint inventor is not someone who merely assists the actual inventor after conception of the invention.”

    This touches upon the sometimes very sensitive topic of when a patent practitioner crosses the line from preparing a patent specification into joint inventorship.

  3. Amit Tailor October 13, 2020 12:11 am

    Practically complex but visibly simple concept described in very simple language. But on a lighter note – “A joint inventor is not someone who merely assists the actual inventor after conception of the invention.” is easier said than practiced; only a legal practitioner or in-house counsel would appreciate how much difficult it is to make the ‘inventors’ realize this and understand that who is(are) the ‘true’ inventor(s) and who is(are) the ‘pair of hands’.
    Thanks for enlightening.

  4. Anon October 13, 2020 7:44 am

    I hear you ipguy, and see this all the time.

    The view that I (and the firm that I work for) have taken is that the teasing out and “legalizing” of an innovation is not itself the innovation.

    We may be Michelangelo’s to the David of an inventor’s block of marble, but the innovation is already “in there” and we are merely freeing the legal form.

    (yes, I chose this analogy precisely because the “it’s already in there” is a nuanced concept — but if what we did was easy, then there would be no need for our talents)

  5. Anon October 13, 2020 1:18 pm

    I have to think that “Reginald’s” rant above was the result of an AI project.

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