There are a series of questions you’ll want to step through in order to avoid any mishaps on who can claim inventorship. While the below runs through the more straight forward scenarios, your patent attorney will discuss and extract more details during the interviewing and disclosure process.
Determining inventorship should be relatively straight forward. However, you may find that it’s anything but straight forward. For example, some people may believe they should be listed as an inventor because they merely voiced probing questions that may or may not have expanded on an idea or concept. Another example is the developer who was given technical or procedural instructions on how to physically build or code an application, and as a result of spending many hours doing so, now feels they contributed to the invention. In yet another example, a CEO, co-founder, advisor, or other decision-maker wants to be listed as an inventor because of their important contribution to the company, but has not contributed to the invention. All to say, those examples may result in some bruised egos.
To determine who is an inventor, consider asking:
- Who can point to one or more claims and say “that was my idea?”
- Who contributed to any portion of the claims?
The claims recite the invention and define the legal scope of protection which your patent provides. In a typical patent application, there are 20 claims. Each person who can point to one or more claims, or who suggested any of the steps or features listed in the claims, should be listed as an inventor.
Let’s Look at a Few Real-World Scenarios
Can Inventorship Change?
Inventorship can change throughout the lifecycle of a patent if new claims are added, amended, or removed. In fact, a person will be an inventor even if he or she only contributed to a small portion of the features of one of the patent application’s claims. Because of this, it’s important to revisit the list of inventors throughout the patent application process.
Oops, an Inventor Was Left Off the Application? Now What?
The consequences of failing to identify the inventors in a patent application correctly can be severe. First, naming the inventors incorrectly may result in an invalid patent. Although inventorship can be corrected after a patent application is filed, and even after the application grants, it’s much easier to get inventorship right before filing the patent application. Second, if an inventor was omitted, the assignee of record may not be the sole owner of the patent rights. This is because without a contract that specifies otherwise, all inventors have an equal and undivided right to control the prosecution of a patent application, or the commercialization through assignment or licensing of an issued patent. Failing to identify the inventors correctly can lead to demands, litigation, and lost opportunities, which can be costly and generally a headache.
To avoid any mishaps and lost money, it’s important to work with your patent attorney to determine who has rights to call themselves inventor.