IP Essentials: Q&A Series

Q I helped design the prototype of an invention. Am I an inventor? A Under U.S. patent law, someone doing routine experimentation or making passive contribution, such as maintaining lab notebooks or confirming data, is generally not considered an inventor. Complications often arise when defining the combined efforts of a team to reduce an invention to practice. There is a distinct difference between contributing to the actual conception of an invention, and merely acting under the supervision or at the direction of another. Q What is reduction to practice? A After conception, an invention is deemed to have occurred when the inventor(s) have reduced it to practice. Reduction to practice occurs in one of two ways: actual or constructive reduction to practice. 1. Actual – sufficiently developing and testing the invention to show that it will work for its intended purpose. 2. Constructive – filing of a patent application describing and claiming the invention sufficiently to teach one of skill in the art of how to practice the invention. It should be noted that participation in the reduction to practice the invention, without more, does not make an individual an inventor. On the other hand, if a technician conceives of a breakthrough solution during the reduction to practice, and if the breakthrough becomes part of the invention as reflected in the claims, then the technician is a properly named inventor. In other words, someone participating in the reduction to practice must also contribute to the final, complete conception to be an inventor.

Q Can an invention have more than one inventor? A Yes. Joint Inventorship occurs where more than one inventor contributes to the conception of at least one of the claims in the patent. However, each coinventor does not have to contribute to the conception of every claim, nor do they have to work in the same physical place or at the same time.

" Joint Inventorship occurs where more than one inventor contributes to the conception of at least one of the claims in the patent."

Q Can the named inventors change during the patent process? A Inventorship can be changed in a provisional application at any time during its pendency, or even after expiration. The same process is followed to add or remove an inventor, to update the name of an existing inventor, or to change the order of the named inventors. A provisional patent application should identify all persons who may reasonably be named as inventors, even if their contribution may later be excluded in prosecution. Q Why is due diligence in the invention process so important? A Inventorship determines ownership of a patent. Thus, it is important to keep good notes and accurate records, not only of individuals’ contributions during the development process, but also of efforts and diligence to reduce the invention to practice. Each situation is unique and must be evaluated on facts, so maintaining precise documentation for later reference is key in determining the proper inventorship.

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