Inventorship and Ownership
Inventorship and ownership of a patent are two separate and distinct issues. In many cases, a patent is owned by a single inventor, which is an ideal situation that does not present significant legal issues. In some cases, however, the inventor and the owner of the patent may be different when the inventor assigns the patent to an entity, such as a corporation or a university, or to another person. Moreover, in some instances, there could be a team of inventors who assign away their rights to a corporation or another entity. In situations when the inventorship or the duty of an inventor or inventors to assign the patent is not clearly defined, there could be some serious and complex legal consequences.
A patent application filed in the United States must be filed in the name of the person who invented the invention. An inventor is a person who conceived the invention and also reduced it to practice. Conception must be done in the mind of the inventor. Conception is defined as “the complete performance of the mental part of the inventive act” and 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 thereafter to be applied in practice,” and it is established when the invention is made sufficiently clear to enable one skilled in the art to practice the invention by following the inventor’s conception. The invention must also be reduced to practice, which could be done either by making the invention (e.g., making a prototype) or constructively by filing a patent application claiming the invention.
The Patent Act requires “the inventor” to apply for a patent, but the statute also expressly recognizes that a single invention could be jointly invented by two or more co-inventors (see 35 U.S.C. § 111(a)(1). All of the joint inventors do not have to contribute to every claim of the invention. It is sufficient for a person to contribute a conception to one claim in a patent to qualify as an inventor.
Inventors may apply for a patent jointly event though (i) they did not physically work together or at the same time, (ii) each did not make the same type or amount of contribution, or (iii) each did not make a contribution to the subject matter of every claim of the patent.
The issue of who is entitled to be considered an “inventor” becomes critical in view of another rule: In the absence of an agreement to the contrary, each co-inventor becomes a co-owner of the patent and may license third parties to use the invention without the consent of the other co-owners. Therefore, each joint inventor may practice the invention without consent of the other inventors and without any duty to pay the other inventors a share of royalties received from licensing the patent. Thus, it is very important to resolve inventorship issues before the patent is granted by making sure to list all the patent inventors when filing a patent application, because an unnamed inventor may prevent patent owners from enforcing their rights to the patent.