Who Should be Identified as an Inventor on a Patent Application?

By Jason R. Wachter

It is important that the actual inventor or joint inventors of claimed subject matter be named on a patent regardless of whether the patent lists an assignee as the applicant. Failure to correctly list the actual inventor(s) can result in a patent being invalidated and in turn, in a loss of patent right.

To be considered an inventor, an individual must contribute to the conception of the invention. Conception is defined as “…the formation, in the mind of the inventor, of a definite and permanent idea of a complete and operative invention.” Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986). That is, mental control over an invention. An individual who only assists in helping reduce the invention to practice should not be listed as inventor. For example, an employee who has been tasked with following directions to build a product for which a patent has been filed should not be considered an inventor

The inventor(s) named on the patent application at the time of filing can be corrected, if needed, by adding, removing or substituting the proper inventor(s). This can be done both while the patent application is pending before the U.S. Patent and Trademark Office and after issuance of the patent.

While it is essential that the correct inventor(s) be named on a patent, if the patent is not filed in the name of an applicant (e.g., an entity) and is filed by joint inventors, it is good business practice to formalize an agreement amongst the inventors. This can be done, for example, by forming a company to which the patent is assigned. Although the named inventors may all get along when the patent application was filed, if there is a falling out amongst the inventors at a later date, this could result in complications during prosecution of the patent application or after issuance of patent. Without a formal agreement in place, each individual listed an inventor of a patent owns the entire patent and can license and sell their rights without permission from the other inventor(s). An agreement can be drafted outlining each inventor(s) rights to the patent, if applicable. Additionally, by assigning the patent, which is considered an asset, to a company, the inventor(s) may be shielded from personal liability for matters relating to the patent.

In summary, it is important to list all individuals that made a contribution to the conception of an invention to be listed as a named inventor or the rights of a patent may be jeopardized.