“Who Invented This?” Getting It Wrong Can Have Big Consequences

Key Takeaway:

"Who is the inventor?" is a nuanced question that has to be answered correctly—or a patent owner risks invalidation of a patent.

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One of the initial questions I have to ask clients is, “who invented the invention we’re claiming?”

This may seem a straightforward question, and an easy one to answer. However, it is one that is quite loaded like so many others in patent law. It turns out that “Who invented this?” is a nuanced question that has to be answered correctly—or a patentee risks invalidation of any patent that does issue from an application.1See, e.g.Frank’s Casing Crew & Rental Tools, Inc. v. PMR Technologies, Ltd., 292 F.3d 1363 (Fed. Cir. 2002).

At its basics, U.S. patent law requires that a patent application, or a patent issuing therefrom, list all inventors of every claim, accurately.2See 35 U.S.C. § 116(a); see also 35 U.S.C. § 101. In practice, this is certified by the inventors themselves by the signing of a Declaration of Inventorship (or less commonly, swearing an oath), certifying that “​​such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.”335 U.S.C. § 115. This appears straightforward, right?

An Engineer and a Machinist

On one hand, the textbook issue that arises in practice—and in any Intro to Patents class—is the case of an engineer instructing a machinist. Suppose an engineer develops an inventive solution to a problem, and designs a new part, which qualifies as an invention under the U.S. Patent Act. The engineer then provides drawings to the machinist, who then builds the new part for the first time. At the same time, the company files a patent application on the new invention. Inventorship requires material contribution to the inventive subject matter claimed in the patent application. So, while the machinist does all of the physical labor to produce the part, he is not an inventor if his contribution is limited to producing the part the engineer invented. However, if the machinist further improves upon the inventive aspects of the engineer’s design, and the company decides to include a claim in its patent application for this improved invention, then the machinist must be also listed as an inventor. This is one side of the inventive question. However another side exists, and creates a far bigger landmine for startup founders.

The Visionary Founder Is an Inventor—Or Not?

Oftentimes, the responsibility of divining a problem to be solved and solving the problem are different responsibilities within a company. Just because one casts vision for a company as its founder, or strategizes as its chief executive, does not mean that such an individual is an inventor per se. Rather, the question of inventorship turns on whether one made an inventive contribution to any claim in the patent or patent application, which does not necessarily limit inventorship to a company’s “preferred inventors.”4See In re VerHoef, 888 F.3d 1362, 1365–67 (Fed. Cir. 2018); In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat. 1984). Contributions don’t even have to be equal in weight—even a minor contributor to the inventive concept must be included as an inventor. Even when “each did not make the same type or amount of contribution” or “each did not make a contribution to the subject matter of every claim of the patent,” all inventors must be included.535 U.S.C. § 116(a); See also Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998). This extends all of the way to a contribution to a single dependent claim.6See Ethicon Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460-63, 45 USPQ2d 1545, 1548-1551 (Fed. Cir. 1998).

Moreover, in many companies, an officer or manager may oversee and direct research and development from a strategic level. However, just because one controls the process, as is common for a CEO, a CTO, or an engineering manager to do, the Federal Circuit reminds us it is not the case that “a person may be named as a sole inventor even if that person did not conceive of each feature of the claimed invention, as long as the person maintained ‘intellectual domination’ and control over the inventive process.”7In re VerHoef, 888 F.3d at  1365–67. Even if the officer is pitching problems for their engineering team to solve, it’s critical to remember, “one who suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not [a] coinventor.”8Ex parte Smernoff, 215 USPQ 545, 547 (Bd. App. 1982).

Thus, inventorship is often just a question you’re stuck with an answer to (which is why it becomes critical to ensure inventions belong to your company).

Sometimes, Circumstances Require A Company To Exclude An Inventor

Sometimes, it becomes necessary to ”control” the inventors of a patent application. This is in part because each inventor starts out with all of rights granted by the patent—and thus can make, use, sell, and license the invention (e.g., inventors can compete with each other). Suppose, in the engineer-machinist example above, the machinist has left the company and cannot be reached or worse—as may be his right—refuses to assign his rights in the invention to the company and would rather sell a license to a competitor. The work-made-for-hire doctrine of copyright law does not extend to patent law, and the so-called hired-to-invent doctrine that does exist in patent law is often inadequate to capture inventions outside of very limited circumstances. While some mechanisms exist to address these situations, the most expedient solution may be to exclude the subject matter invented by the rogue machinist. Since his inventive contributions are not included in the patent application, not only need he not be listed as an inventor, but he cannot be listed as an inventor.

Many Inventorship Mixups Can Be Fixed

The patent application, and later the patent itself, must list all those persons who made material contributions to the inventive aspects of the claimed invention. Thankfully, even if this nuanced question is answered incorrectly at first, the law does provide remedies to correct deficiencies in inventorship.9See 35 U.S.C. §§ 116(c), 256(a).

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