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Inventorship has strict legal meaning under the laws and regulations
of the patent system of each country. In fact, a patent can
be invalidated on the basis that the named inventors intentionally
failed to name qualified inventors or included someone who
was not a true inventor. Moreover, in most jurisdictions a
person who falsely claims to be an inventor could be subject
to criminal penalties. Although many erroneous claims to inventorship
can be ‘fixed on the courtroom steps,’ the cost
of having extra individuals, each with their respective legal
team, could significantly increase the complexity and costs
of resolving any patent infringement or ownership matter that
arises over the 20-year lifespan of a patent. The sooner inventorship
is resolved, the less money wasted on this issue. The final
decision as to inventorship, when not obvious, should always
be made in consultation with an experienced patent lawyer.
The claims of a patent application determine
who is and who is not an inventor, and should be used as guides
in determining inventorship. Certain key principles apply
when making a determination of inventorship are set out below.
Key Principles of Inventorship
and Co-inventorship
An inventor is a person who contributed
(ie. conceived of) an essential element of the invention that
resulted in the development of the invention as it is claimed.
To establish inventorship, ultimately the claims of an issued
patent are determinative. Therefore, who is named as an inventor
on a patent application is subject to change over time depending
upon how the claims evolve throughout the prosecution stage
of a patent application and within the individual patent offices,
to those that ultimately issue. Accordingly, any inventorship
review conducted at the time of filing a patent application
is also necessarily qualified or subject to revision any time
the claims are amended.
An inventor can make inquiries and receive
advice from others skilled in the art, without losing status
as a sole inventor. One, who merely suggests an idea of a
result to be accomplished, rather than the means of accomplishing
it, is not a joint inventor. Even though others may have suggested
variants or elaborations to the invention, if those variations
or elaborations would have been obvious to one skilled in
the field of the invention, then the invention would be the
product of the single initial person.
A Contributor who is not an Inventor
A person, who contributed only labour and/or
to the supervision of routine techniques, is not considered
an inventor. Persons who follow the inventor’s lead in
carrying out tests and experiments or in reducing the invention
to practice are not joint inventors. The key is whether the
original conceiver truly “conceived” all the essential
elements of the invention, so that subsequent workers were
not required to perform “inventive” activity.
Are you an inventor? If you have any questions with respect
to inventorship, please feel free to get in touch with one
of our patent specialists.
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