Inventorship Determination

Who should be listed as an Inventor?

Inventorship is a legal determination that must follow patent law in order to support the validity of an issued patent. The key points that may apply to your invention and situation:

  • The inventive process has two steps: 1) conception and 2) reduction to practice. An inventor is one who first “conceives” of the claimed invention, but the individual need not be the one who reduces it to practice. Only the mental aspect of conception is relevant to determining inventorship.
  • The “conception” of an invention is complete if the inventor is able to make a disclosure that would enable one skilled in the art to actually make the invention without extensive research or undue experimentation.
  • One who merely constructs the invention based on the inventor's conception is not an inventor. Also, one who conducts validation experiments or research based on the inventor’s instruction is not an inventor. However, if the second person contributes an original idea or design to enable the invention to be reduced to practice, that person may also be an inventor.
  • One who merely suggests a desired result or inspires a line of study without any disclosure of the means by which the result is to be attained is not an inventor.
  • Inventorship is independent of ownership and authorship (e.g., for a scientific paper), and must be determined based on the specific claims of the invention, without regard to social, political, business or academic considerations
  • Inventorship may change as the invention evolves or improves. As research leads to new findings and new collaborations are made, inventors may be added, or in some cases, deleted from a patent application, if there was no intent to deceive the patent office by submitting the original list of inventors.

By signing the Invention Disclosure Form (IDF), each inventor is asserting that they are an inventor of the technology disclosed in the IDF. By stating that they are an inventor, the person is stating that they have made a contribution to the conception of the invention as it is currently understood and disclosed in the IDF.
 
As an inventor, they will be listed as an inventor on any patent applications that are filed, and they will be asked to sign an oath or declaration that will be submitted along with any application that is filed in which they declare that they are a true inventor of the technology disclosed.
 
If inventorship is disputed in the future, each inventor will be asked to provide evidence of their contribution to the conception of at least one claim in the issued patent. In an academic research setting, sufficient evidence may include a properly maintained and witnessed laboratory notebook.
 
Mere conversations and recollections may not be sufficient evidence to establish a contribution to conception.
 
OTC generally relies on the IDF as being the correct listing of inventors.
 
In order to assist you and your colleagues in determining whether they should be considered inventors, please refer to the Patent information provided by the USPTO for additional information (see below). If questions remain regarding inventorship, it may be necessary to discuss the matter with our outside counsel. This may result in increased patent costs, and will require the prior written consent of the administration.
 
This document is intended as general information regarding inventorship and should not be interpreted as legal advice relating to your specific invention or situation.
 
USPTO Information about Patents