Joint Inventorship In Patents Can Present Problems

Once an invention has been developed and a corresponding patent application is written, determining an inventorship list for the application might just seem like a formality to get the application filed. Particularly in cases where the application is owned or applied for by a company instead of the inventors, the inventorship may appear especially unimportant. However, an incorrect list of inventors could have a major effect on the ownership or validity of a patent.

An inventor is someone who contributes to the conception of at least one claim in a patent. Conception occurs when an inventor has consciously and completely developed the idea for the invention in his mind, so that no further inventive steps are needed to reduce the invention to practice. If conception sounds like it would be hard to prove, that's because it can be. This is why it is important to keep documentary evidence of conception, such as lab notebooks or invention disclosure forms. Such documentary evidence is particularly important now that the America Invents Act (AIA) is in place, which states that if two applicants are in dispute over who is the true inventor, one applicant can triumph if he can prove that the other applicant derived the invention from the first applicant's own work.

The inventorship rule is relatively clear when an invention was conceived by a solo inventor, but can become complex when more than one person is considered an inventor. In such cases, multiple inventors should be listed jointly on a patent. A joint inventor is an individual who has not only made a significant contribution to the conception of the invention, but also participated in a "collaboration or concerted effort" towards the invention. Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1359. This collaboration or concerted effort does not require that the joint inventors physically or concurrently worked together, but does dictate that the inventors "have some open line of communication during or in temporal proximity to their inventive efforts." Id.

The rules surrounding joint inventorship of a patent are not exactly intuitive. For example, if a patent contains 200 claims, and person X contributed to the conception of one claim while person Y contributed to the conception of the other 199 claims, both X and Y potentially have equal ownership rights in the patent. This means that both X and Y may be able to independently grant a license to the entire patent, even though X only...