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What do you need to know?

All patent applications must name one or more inventors that came up with the invention. Incorrectly naming an inventor may put your resulting patent at risk. It is therefore important to know what the legal standard is to identify an inventor and protect your intellectual property assets.

Here is what I cover in this post:

What Can Happen If An Inventor Is Incorrectly Named?

The most detrimental effect of improperly naming an inventor can be the invalidity of the patent. If an inventor is intentionally misnamed, then the patent can be found to be invalid from the very beginning. Essentially, the patent is treated as if it never existed. Misnaming an inventor is adding someone that did not contribute to the invention or leaving someone off that should be named. The intent to misname someone does not have to be for a derogatory, malicious, or nefarious purpose. For example, an inventor may not want to be named because they do not want to have their name in a public record, or an inventor is named to show gratitude for participation in a project even if not contributing to the invention. Other examples may be to not name someone because they no longer have a relationship to the company or a company does not want a competitor to know that a product is protected or belongs to them while in the patent examination phase before a patent registers.

Unintentionally misnaming an inventor can also have negative consequences. If an inventor is inadvertently named or not named, a correction can be filed with the United States Patent and Trademark Office. However, depending on when the request is made, additional fees may be incurred. In addition, if a person is inadvertently left off and then added, it may be harder to find the person later to obtain the necessary signatures and confirmations for the application. One of the more problematic issues arises around the resulting ownership of the patent if someone is added. The inventor is generally the owner of a patent that names them as an inventor. A company or other entity can be assigned their ownership rights. However, if someone was inadvertently left off of an inventor list, the necessary assignments to confirm transfer of ownership may not have been obtained. The added inventor may then have rights to the patent that they may not have had if they were originally named and the transfer rights were negotiated or confirmed at the time the application was filed.

What is the Definition of an Inventor?

As provided by the Manual of Patent Examination and Procedure that sets out the guidelines for the patent process in front of the United States Patent and Trademark Office, the definition of an inventor is “who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor. … Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant.” There is no requirement that an inventor actually makes a prototype or otherwise makes, uses, or puts the invention into practice (otherwise known as reducing the invention to practice).

How to Determine Who Is An Inventor?

An inventor is someone who conceived or contributed to the conception of the invention. The conception of an invention is the definite and permanent idea of the complete and operable invention. An inventor may consider and adopt ideas and materials derived from many sources, including suggestions from others so long as he or she maintains intellectual domination of the work of making the invention. A person is not an inventor if their contribution is simply to use ordinary skill to implement instructions from another that does not require extensive research or experimentation. A person is also not an inventor if they provide only lofty or theoretical objectives to be achieved. For example, someone who suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not a co-inventor.

Inventorship is identified by the claims of the invention. Therefore, you should look specifically at the numbered claims at the end of the application to determine who contributed to specific features of each claim. It is also helpful to explain to your patent practitioner the contributions of others so that the inventorship of the application can be properly identified.

Finally, an inventor has to be a human. An inventor cannot be a company or an artificial intelligence system.

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