Will the Real Inventor Please Stand Up- Determining Inventorship in a Patent. Episode 84

Inventorship vs. Ownership

In this episode, I’m going to talk about what it means to be an inventor for a patent. Inventorship is different from ownership of a patent. Both are important, but you must first determine who the inventor is or who the inventors are. Many people may work on a product, but that doesn’t necessarily make all of them inventors.

For example, if you came up with an idea but didn’t know how to put it together, and an engineer helped make it work, is the engineer an inventor too? This matters because, by default, inventors are the owners of a patent unless they assign their rights. If you assume you own 100% of a patent, only to find out later that someone else claims inventorship, you may lose a percentage of the profits.

Inventorship Cannot Be Negotiated

You can’t negotiate inventorship. Someone is either an inventor, or they are not. If they are an inventor, they must be listed on the patent. If they are not, they cannot be listed.

You can’t say, “I know we worked on this together, but I’ll give you $10,000 if you let me list myself as the sole inventor.”What you can do is offer $10,000 in exchange for them assigning their rights to you. But they will still legally be an inventor.

You need to get inventorship correct before the patent issues—preferably even before filing the application. Changing inventorship after a patent has been granted can be a legal headache, especially if the inventor refuses to agree to their removal. If that happens, you’ll likely need to go to court.

How Is Inventorship Determined?

The definition of inventorship is outlined in the Manual of Patent Examining Procedure (MPEP) 2137.01. While having a definition is helpful, applying it in practice can be tricky.

The threshold question in determining inventorship is: Who conceived the invention? Unless a person contributes to the conception of the invention, they are not an inventor. This standard comes from the case Fiers v. Revel.

What Does It Mean to Conceive an Invention?

Conception means more than just having an idea. In Hybritech Inc. v. Monoclonal Antibodies, the court defined conception as:

“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.”

In other words, you must not only have an idea but also a plan to create the invention.

Example: The Avocado Splitter

Let’s use the avocado 3-in-1 splitter, pitter, and slicer as an example. Suppose you initially think, “There should be a device that makes slicing avocados easier.” That’s a great idea, but it’s not conception.

Conceiving the invention means thinking of a single device with different parts: one part for splitting the avocado, another for removing the pit, and a third for slicing it into multiple pieces. You may not have worked out all the details, but at this stage, you have conceived the invention.

Determining Inventorship Through Patent Claims

The next question is: What defines the invention? Is it the actual product or something more?

Since the claims define the invention, you determine inventorship by reading the claims. Anyone who conceived of any part of a claim is an inventor.

Who Is Not an Inventor?

• The law states that an inventor does not need to reduce the invention to practice—meaning, they don’t need to physically create it.

• If you conceived an idea but had an engineer execute it without adding any inventive contribution, you are still the sole inventor.

• If the engineer contributed to the conception of a claim element, then they are a co-inventor.

  
  

For example:

• If you tell an engineer, “I want a slicer with a splitting blade and a pit remover,” and the engineer says, “That’s a great idea! How about adding a slicing component?”—then the engineer is a co-inventor.

• If you came up with all three parts yourself and the engineer only helped with materials, spacing, or colors, they are likely not an inventor.

  
  

An invention can have multiple conceptual points at different times. As long as there was collaboration and multiple people contributed to what later became the claims, they are co-inventors.

Inventorship in Team Settings

Determining inventorship in a team setting can be difficult, especially when employees work under supervision.

• If team members conceived of ideas that ended up in the claims, they are inventors.

• If they only followed instructions to make an invention work, they are not inventors.

This differs from authorship in scientific papers. In science, technicians and contributors may be listed as co-authors, but in patent law, inventorship follows a strict legal standard.

Equal Ownership Rights for Inventors

Inventors own the patent jointly, regardless of how much each person contributed. If two inventors are listed, each owns 100% of the patent—not 50% each.

This means:

• Any inventor can license the patent without paying the other.

• Example: If Bob and I are co-inventors, Bob can license the patent for $1,000,000 and keep all the money.

To prevent this, inventors can:

• Form a company and assign rights to it.

• Create contracts defining ownership shares.

• Buy out a co-inventor’s share.

  
  

Changing Inventorship After Filing

If a patent application initially lists two inventors, but during prosecution, claim amendments remove the contribution of one, that person must be removed from the patent.

Since inventorship affects ownership and enforceability, it’s crucial to get it right. Consult a patent attorney if there are any doubts.

Conclusion

That’s the basics of inventorship. It’s not about who worked the hardest—it’s about who conceived the invention as defined in the claims.

I’m Adam Diament, and until next time, keep on inventing!