A patent confers a powerful right to its owner to protect an invention, whether a chemical, a carburetor, an antibody or a television. A company's patent portfolio is one of its highly desired assets, and often exceeds millions of dollars in value. To be patented in the United States or anywhere else, an invention must, at a minimum, be new, useful and non obvious. United States patent law is unique, however, in that it also places considerable importance on correctly naming the inventors of a patented invention. The consequences of getting inventorship wrong can be severe. This article briefly outlines the concept of inventorship, the consequences of improper inventorship determination, and steps for preempting such problems.
INVENTORSHIP DEFINED
Conception
The inventor of a patented invention is the person who conceived the invention. Conception involves having a definite and permanent idea of an invention in mind, where all that remains is to reduce the invention to practice. It is not an act of inventorship to relay to the true inventors that which was already known publicly. In other words, an inventor is free to use the services, ideas and aid of others in perfecting her invention without losing her right to a patent. Providing technical assistance that is merely the exercise of normal skill is not inventorship.
Determining inventorship differs from determining authorship of a publication, for example, in that authorship typically requires overall "fairness" and often factors in physical and financial contributions in addition to intellectual ones. Determining who conceived an invention might appear simple, But it is one of the most difficult, task in American patent law.
Sole and Joint Inventors
A patented invention can be conceived by a sole inventor, or jointly by two or more inventors. For there to be joint invention, some amount of collaboration or connection between two or more inventors of collaboration or connection between two or more inventors must occur. However, for inventors to be jointly named on a patent, it is not necessary that they (i) physically work together or at the same time, (ii) make the same type or amount of contribution, or (iii) make a contribution to the subject matter of every claim of the patent.
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