Getting Inventorship Right the First Time David v. Radack

One of the most difficult questions and-€itherpersonally or through some- ered joint inventors. Each claim of the that must be answered by a patent pro- one else-actually or constructively re- patent is analyzed in this fashion . Under fessional is "Who is (are) the inventor(s) duces the invention to practice. The current patent law, the inventors listed of this invention?" Although the rules conception of an invention is complete if in the patent application are all those are simple to state, the application of the inventor is able to make a disclosure individuals who solely invented or co-these rules is extremely difficult; this that would enable one skilled in the art invented even just one claim. difficulty is compounded by many non- to actually make the invention without Prior to 1984, some case law rigidly legal factors as well (e.g., office politics extensive research or experimentation. construed joint inventors hip to include and business). This article attempts to One who merely constructs the inven- only those inventors that worked to-shed light on this difficult subject so that tion based on the inventor's conception gether at the same time, made an equal non-patent professionals and inventors is not an inventor. contribution to the invention, or contrib-will better understand the law of inven- On the other hand, merely suggesting uted to every claim of the invention. torship and how the law is applied to a desired result without any disclosure Thus, inventorship could be denied to a certain situations. of the means by which the result is to be person who made only a slight contribu-

Before delving into the law of inven- attained is not inventorship. If, for ex- tion to the invention. With the 1984 torship, however, it must be emphasized ample, someone suggested to the Wright amendments to the inventorship section that inventorship is strictly a legal ques- brothers that motorized flight would be (section 116) of the U.s. Patent Act, how-tion that must be determined by a patent desirable, but did not describe a means ever, inventors may now apply for a professional. The patent professional of accomplishing it, the person making patent jointly even though they did not must be free to make an independent the suggestion would not be an inven- physically work together at the same investigation and an informed judgment tor-no operative or specific means of time, each did not make the same type or based only on the facts of the investiga- achieving the result were disclosed. amount of contribution, or each did not tionand the law ofinventorship. ----------------------- contribute to the subject matter Political considerations (e.g., su- Merely suggesting a desired result of every claim of the patent. pervisors taking credit for the Failure to name the correct inventions of subordinates) or without any disclosure of the "inventorshipentity" can result business considerations (e.g., b h· h hi· in the invalidation of the patent. not naming inventors who work means y w IC t e resu t IS to Becauseofthe harshness of this outside the company) cannot be attained is not inventorship. If, penalty, liberal correction pro-enter into the decision. An in- cedures are available to remedy complete, biased, or politically for example, someone suggested the improper naming of inven-motivated investigation and de- to the Wright brothers that tors. Under these procedures, termination can lead, ultimately, inventors can be added, re-to the issuance of an invalid motorized flight would be moved, or substituted in order patent. to obtain the correct inventor-

Under U.S. patent law, only a desirable, but did not describe ship entity. The rules require true and original inventor may a means of accomplishing it, the that the error must have been apply for a patent. The true and innocent (i.e., made without de-originalinventormaybeasingle person making the suggestion ceptive intention). A furtherre-person or a group of people. would not be an inventor. quirement is that the applica-Also, a patent application must tion to correct the inventorship only name people as inventors. must be diligently made after A company or other legal entity cannot The claims of the patent are used as the discovery of the error. be named as an inventor in a patent the standard for determining inventor- To avoid potential problems, re-application. Confusion sometimes arises ship, be it an individual or a group. An searchers, scientists, and engineers in-when the concepts of inventorship and illustration: Assume that a patent claim volved in the invention process are en-ownership become mixed. If all of the contains element A, which was invented couraged to cooperate fully with the inventors had agreed, as a condition of by inventor X. Inventor X will be consid- patent professional in helping him or employment, to assign their inventions ered the sole inventor of that claim. Con- her get all the facts needed to make the to the company, the company owns the sider, however, a patent claim that in- correct judgment. invention. The inventors, however, are cludes a combination of element A (in- ---------------named in the patent application. Hence, vented by inventor X) and element B, the question of inventorship is separate with B being added to A based on the from the question of ownership. suggestion of inventor Y. In this second

An inventor is one who "conceives" case, inventors X and Y would be consid-

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David V. Radack is a partner at Eckert Seamans Cherin & Mellott ill Pittsburgh, Pennsylvania.

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JOM • June 1994