Who Is An Inventor For A Patent?

By Barry R. Lewin

For a variety of reasons, it is important to properly list the inventors to a patent application.  However, there can be a question as to when someone should be considered “an inventor.”

Under 35 U.S.C. § 116(a), “When an invention is made by two or more persons jointly, they shall apply for patent jointly … Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.”

In Dana-Farber Cancer Institute, Inc. v. Ono Pharma. Co., LTD., the Court of Appeals for the Federal circuit, recently addressed the question of who should be considered for joint inventorship.  In the case, Ono had received patents related to cancer treatment and Dana-Farber argued that Ono had left off some inventors, thereby in non-compliance with Section 116(a).  In the case, Ono argued that the unnamed inventors had contributed to earlier work which was foundational but not part of the claimed invention.  Their contributions did not result directly in the claimed invention and did not end up in the claims.  However, the Court disagreed, noting that the unnamed inventors had participated in some but not all of “the experiments that led to the conception of the claimed inventions.”  The Court went on to state that even though the inventor may not have contributed to the completion of conception, they could still be an inventor.  In other words, collaboration during the process is a guidepost to being considered an inventor, but that collaboration must be significant toward the ultimate conception.

Patent applicants need to consider the conclusions of this case when determining who an inventor actually is.  Of course, there is no bright line separating inventors from non-inventors, but it is better to err on the side of caution – if someone contributed to something which led to conception, and collaborated with others whose work did result in conception, that someone should also be listed as an inventor.