Identifying Inventors is a Critical Step in Pursuing Patent Protection

In pursuing patent protection for an invention, it is critically important that the inventors are accurately identified. Indeed, the foundation of the U.S. patent system is Article I, Section 8, Clause 8 of the U. S. Constitution, which provides that “Congress shall have power …To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” In practice, this means that, when preparing and filing a patent application in the U.S. Patent and Trademark Office, the inventor (or inventors) who created the invention described and claimed in the patent application must be accurately identified.

Identifying inventors is not always easy, and it is important to not only include all individuals who qualify as inventors, but also to omit individuals who do not. In general, an inventor is defined as an individual who conceives the solution to a problem which constitutes the subject matter of the invention. With respect to a patent application, this means that an inventor is any person who made a material contribution to the subject matter recited in at least one claim of the patent application. Applying this guidance requires careful consideration of the facts in each case. In attempting to identify who the inventors are for any particular invention, there are a few concepts that can aid in the identification:

• An inventor must contribute to the conception of the inventive concept, not simply the reduction to practice.¹ Conception is the touchstone to inventorship and may be thought of as the mental or creative part of the inventive process, wherein reduction to practice involves only the practical implementation of the inventive concept.
• A person who merely identifies a problem that needs to be solved or a desired result is not an inventor. The inventor is the individual who identifies a means of solving the problem or achieving the desired result.²
• A person who merely follows the instructions of the person who conceived the invention is not an inventor.³
• A person who simply aids an inventor by explaining concepts that are well-known and/or advising with respect to the current state of the art does not become an inventor by offering such aid.⁴

Of course, in many cases, there are multiple inventors, as inventions are often the result of collaborative efforts. And, even if one individual contributed more or less than another, that does not change their status as joint inventors. Indeed, the relevant statute expressly notes that “[i]nventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.”⁵

As reflected in the discussion above, identification of the inventors is a fact-specific inquiry, and there is no bright-line test for identifying inventors. Thus, it is important to consult with your patent attorney and share all relevant facts about the conception of the invention and its reduction to practice as part of the process of preparing and filing a patent application.

Failure to accurately identify the inventors in a patent application can lead to significant legal consequences. For example, in a recent case from the U.S. Court of Appeals for the Federal Circuit, misidentification of the inventors led to a significant loss for the presumptive patent owners. In Blue Gentian, LLC, et al. v. Tristar Products, Inc., Case Nos. 2021-2316, 2021-2317 (Fed. Cir. 2023), only one inventor (Berardi) had been identified on the patents in issue. The presumptive patent owners filed suit against the defendant for infringement of those patents. In defending against the infringement allegations, the defendant argued that a second individual (Ragner) had been erroneously omitted as an inventor. That second individual (Ragner) was affiliated with the defendant and had granted a license to his rights (if any) under the patents in issue to the defendant. After an evidentiary hearing about the circumstances surrounding the conception of the inventions described and claimed in the patents in issue, and the subsequent reduction of the inventions to practice, the trial court ruled that the second individual was an inventor. The trial court ordered correction of the inventorship with respect to the patents in issue. As an inventor, the second individual (Ragner) was a co-owner of the patent rights had the right to grant defendant with a license to make use of practice under the patents. As such, the asserted claims for patent infringement failed and were dismissed. The U.S. Court of Appeals for the Federal Circuit affirmed the reasoning and conclusions of the trial court.

Finally, at any time during the prosecution of a patent application (or even after issuance of patent), it is possible to correct the identification of the inventors if the misidentification was the result of a good-faith error. Accordingly, should new facts come to light that require a reevaluation of the identification of the inventors, that information should be promptly communicated to your patent attorney.

Stites & Harbison’s full-service Intellectual Property & Technology Group regularly assists clients in the acquisition, management, licensing, and litigation of patents, copyrights, trademarks, and trade secrets. For questions, comments, or assistance with any intellectual property-related matters, please contact the author or any of the other attorneys in our group.

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¹Fina Oil & Chemical Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).
²Garrett Corp. v. United States, 422 F.2d 874, 881 (Ct. Cl. 1970).
³Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985).
⁴Fina Oil & Chemical Co., 123 F.3d 1466, 1473 (Fed. Cir. 1997).
⁵35 U.S.C. § 116(a).