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To be or not to be an inventor?

The issue of inventorship is often raised during patent litigation.  If the inventors are incorrectly stated, the patent being asserted is unenforceable. For this reason, a critical component of developing a valuable patent portfolio is to have a process for making sure that inventorship is correctly stated. Because claims change during the patent application process, inventorship is sometimes a moving target.  Thus the best practice for nailing down proper inventorship is to examine the issue every time a change is made to the claims.

So who is an inventor? The inventor is the person who conceived of the idea that is claimed. Conception – not creation, is the cornerstone of inventorship. A person who merely implements an idea or supervises the implementation of it is not an inventor unless they contribute an enabling detail or improvement that ends up in the claims of the patent. A person who is hired to implement an idea is not an inventor by default. Moreover, the person in charge of the project is not automatically an inventor.  In many cases, excluding a person’s boss,  particularly when he or she was not involved in conception of the core innovation, is the correct move.  Inventorship can get complicated when a person has an original idea, but lacks the expertise to enable the idea, thereby necessitating the need to hire someone to build the idea. In such cases, the person who was hired often contributes significantly towards enabling the idea and may provide additional concepts, making that person a co-inventor.  

The bottom line with inventorship is that there are many nuances to consider and seeking the advice of a competent patent attorney is the best practice for making sure inventorship is correctly stated. Getting inventorship right is a critical to making a patent enforceable and having a process for making sure inventorship is right is a critical part of any intelligently executed intellectual property strategy.

Written by
Dan Cotman
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