Identifying Inventors Is A Critical Step In Pursuing Patent Protection

• Published date: 26 June 2023
• Subject Matter: Intellectual Property, Patent
• Law Firm: Stites & Harbison PLLC
• Author: Mr David W. Nagle Jr.

In pursuing patent protection for an invention, it is critically important that the inventors are accurately identified. Indeed, the foundation of the U.S. patent system is Article I, Section 8, Clause 8 of the U. S. Constitution, which provides that "Congress shall have power ...To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." In practice, this means that, when preparing and filing a patent application in the U.S. Patent and Trademark Office, the inventor (or inventors) who created the invention described and claimed in the patent application must be accurately identified.

Identifying inventors is not always easy, and it is important to not only include all individuals who qualify as inventors, but also to omit individuals who do not. In general, an inventor is defined as an individual who conceives the solution to a problem which constitutes the subject matter of the invention. With respect to a patent application, this means that an inventor is any person who made a material contribution to the subject matter recited in at least one claim of the patent application. Applying this guidance requires careful consideration of the facts in each case. In attempting to identify who the inventors are for any particular invention, there are a few concepts that can aid in the identification:

• An inventor must contribute to the conception of the inventive concept, not simply the reduction to practice.¹ Conception is the touchstone to inventorship and may be thought of as the mental or creative part of the inventive process, wherein reduction to practice involves only the practical implementation of the inventive concept.
• A person who merely identifies a problem that needs to be solved or a desired result is not an inventor. The inventor is the individual who identifies a means of solving the problem or achieving the desired result.²
• A person who merely follows the instructions of the person who conceived the invention is not an inventor.³
• A person who simply aids an inventor by explaining concepts that are well-known and/or advising with respect to the current state of the art does not become an inventor by offering such aid.⁴

Of course, in many cases, there are multiple inventors, as inventions are often the result of collaborative efforts. And, even if one individual contributed more or less than another, that does not change their status...