© 2002, Gallagher & Dawsey Co., LPA
The popular conception of the solo inventor is that of the lone wolf,
heroic and independent, laboring long hours in total isolation to come
up with a patentable invention. How true this may be remains arguable,
but from a practical standpoint, how many ideas in this world spring
forth fully formed in the mind of a single individual, with no
suggestion or influence from the works of others? As a result, it is
important to consider the concept of inventorship in U.S. Patent law.
Unlike many other world jurisdictions, the United States has no
nationality requirement, nor does the U.S. allow anyone other than the
"true inventor" to file for a patent. In fact, 35 U.S.C. §102(f)
requires that all joint inventors file for the patent. Although there
are some exceptions for unavailable inventors, this means that the
question of inventorship is a threshold issue that must be determined
before an application can even be properly considered.
The courts have held that conception of an idea is the touchstone of
inventorship. The picture becomes less clear when we must consider the
nature of conception. Conception is more than an incidental suggestion
and more than carrying out the instructions of another to build a
prototype. To be legitimate joint inventors, the U.S. Supreme Court
has said that the efforts of each must be a true collaboration, that
is, the collaborators worked together toward a common and final end
that was only achieved by, and because of, the united efforts of the
team. Notice that this definition does not require that co-inventors
to both contribute to each and every feature of the inventor, nor is
there any requirement that they work together in the same physical
location or at the same time.
Most interesting, and most problematic, there is no requirement that
co-inventors make equal contributions to the final invention. For
example, a small, but critical breakthrough contributed by one
contributor may entitle him or her to joint inventor status. On the
other hand, an inventor is free to incorporate non-essential
suggestions to the final invention without sharing inventorship.
The key lies in an assessment of the criticalness of the contribution
to the final invention rather than to look at status issues such as
who is "merely" supplying materials or acting in an assistant's role.
In a case where an inventor failed to accord joint inventor status to
those who supplied materials and critical data to the named inventor's
understanding of the patented subject matter, the court invalidated
the patent. Similarly, an assistant or employee can make critical
improvements to an idea that raise him or her to the level of a joint
A frank discussion with a patent professional is very important.
Discuss the various people who have been involved with your project
and what their contributions have been. Set any ego considerations
aside and frankly admit the contributions, if any, of others. Better
to sort out difficult questions of inventorship before the application
is filed than to face charges of inequitable conduct before the Patent
and Trademark Office or courts that can void all patent protections!