Who Is The Inventor? The Art Of Determining Conception Of An Idea

In the world of academia and research, scientists spend countless hours thinking, researching, experimenting, and finally, drafting manuscripts before sending them off to journal editors and reviewers. In the course of preparing each article, they may include as co-authors the names of other graduate and undergraduate students, thesis advisors, collaborators, and/or other individuals who gave them valuable feedback along the way.

Such is the way of the research community, but not so when it comes to inventorship on patent applications. To most scientists, inventorship is rooted in collaboration, collective research, and, in some cases, seeming fairness. In fields such as biotechnology and medical devices, where ideas and projects are often the product of extensive research and collaboration across various disciplines, inventorship choices can be intricate, sensitive, and complex. However, the determination of proper inventorship is actually a complicated question of critical legal nature, with vast implications.1

So important is the nature of inventorship that its origins are vested in the US Constitution itself.2 Despite the significance of the role of the inventor in a patent application, the law provides little guidance on who legally constitutes an inventor.

Basically, an inventor is the individual who invented the subject matter of the invention.3 The rights bestowed upon inventors and owners of a patent to "exclude others from making, using, offering for sale, or selling [their] invention" hinge particularly on the claims listed within a patent.4

However, inventorship does not necessarily vest with those who contributed to the entirety or any part of the application, but only with those who contributed to the claims which are ultimately designated. Once the claims have been drafted, determining inventorship comes down to a question of "conception."5

The inventor(s) are generally the individual(s) who actually conceived of the original idea,6 as opposed to those who performed the experiments validating it. In particular, it is the "idea of a result to be accomplished," not the "means of accomplishing" a result, that creates conception that rises to inventorship.7

Ultimately, if an individual conceived of an invention, he or she is the inventor, unless the invention is merely the result of others' ideas. "It is the ... formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is...