Inventorship: Who is the Inventor?

Inventorship: Who is the Inventor? Thoughts from the Manual of Patent Examining Procedures (MPEP) Section 2137.01

The requirement that the applicant for a patent be the inventor is a characteristic of United States patent law not generally shared by other countries. The party or parties executing an oath or declaration under 37 CFR 1.63 are presumed to be the inventors.

The definition for inventorship in the United States can be simply stated: The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor. Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant, except for simultaneous conception and reduction to practice. One must contribute to the conception to be an inventor. A person who suggests an idea of a result to be accomplished rather than the means of accomplishing it, is not a co-inventor.

In arriving at conception, the inventor may consider and adopt ideas and materials derived from many sources such as a suggestion from an employee or hired consultant so long as he maintains intellectual domination of the work of making the invention. This includes the successful testing, selecting or rejecting as he goes, even if such suggestion or material proves to be the key that unlocks his problem. Difficulties arise in separating members of a team effort, where each member of the team has contributed something, into those members that actually contributed to the conception of the invention, such as the physical structure or operative steps, from those members that merely acted under the direction and supervision of the conceivers. There is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf.

The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. Inventors 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 according to 35 U.S.C. 116. The statute neither states nor implies that two inventors can be ‘joint inventors’ if they have had no contact whatsoever and are completely unaware of each other’s work. What is required is some “quantum of collaboration or connection.” In other words, for persons to be joint inventors under Section 116 there must be some element of joint behavior such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it, or hearing another’s suggestion at a meeting.

This document should not be construed as legal advice. It may only contain general explanations of laws to answer certain frequently asked general questions. In addition, this article pertains to general frequently asked questions under U.S. patent and Tennessee law. Consult a patent attorney in your state for your specific legal questions.