Introduction 

New processes, materials, software and other things are often created collaboratively in a University setting. Students, postdoctoral fellows, faculty, research associates and technicians may each contribute to a particular research project. Yet not everyone working on a project may be considered the legal “inventors” or “originators” of the resulting intellectual property.

It is crucial to correctly identify who are the inventors, if an invention is to be protected and commercialized. A patent may be invalid if some of the inventors are not listed in the patent application or if a person is listed as an inventor who is not legally entitled to be named as such. Licensing rights may also be affected by failing to correctly identify the inventors.

What is an invention?

An invention is “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter.”

The invention is defined by the claims of the patent.

Acts of inventing

The act of inventing involves two stages:

1. Conception of an idea and
2. Reduction of the idea to a practical form.

An invention begins with an idea -- “conception” of the thing or subject matter that is ultimately created and the complete means of creating it. Then the idea is reduced into practice by testing and ultimately making or translating the idea into a physical and useful form. The conception (idea) stage is complete when there is definite and permanent idea of an operative invention that could be described to a person of ordinary skill in the art who could then construct or use the invention without extensive further research or experimentation.

Who is an inventor?

An inventor is a natural person, not a company. There may be one inventor of an invention, or several. For the purpose of determining who is an inventor, only a person’s role in the conception (idea) stage is considered. Each person who makes an original and substantive contribution to conceiving the thing ultimately invented or one of its essential elements is legally entitled to be named as an inventor. An inventor is one who formulates and describes the means of making the thing ultimately invented.

Since the patent claims define the invention the claims are used as the standard for determining inventorship, be it an individual or a group. An illustration: Assume that a patent claim contains element A, which was invented by inventor X. Inventor X will be considered the sole inventor of that claim. Consider, however, a patent claim that includes a combination of element A (invented by inventor X) and element B, with B being added to A based on the suggestion of inventor Y. In this second case, inventors X and Y would be considered joint inventors. Each claim of the patent is analyzed in this fashion.

Who is not an inventor?

A person will not be considered an inventor, if he or she merely:

• suggested or thought about an idea or end result or posed the question to be solved, but did not also come up with the actual way of implementing the idea, achieving the end result or solving the problem;
• contributed an obvious, rather than an original and substantive, element of the invention;
• was involved in testing or reducing someone else’s idea into practice;
• suggested an extraneous idea or a variation that was not incorporated into nor contributed directly to the actual invention;
• followed instructions of those who conceived the end result or solution;
• is the department head, supervisor or head of the laboratory where the invention was developed, but did not contribute directly and substantially to the inventive process; or
• provided funding for the research, equipment or laboratory where the invention was created.

Inventorship versus authorship

Inventorship is also different than authorship. A person may be an author or co-author of a publication describing an invention, but will not be considered a co-inventor unless he or she made an independent conceptual contribution to the invention.

Who qualifies as a joint or co-inventor?

An invention may have more than one inventor. To qualify as a joint or co-inventor, you must have made an independent, conceptual contribution to an invention or one of its essential elements. The contribution must be substantial and one that makes a difference in the essence, use, application or production of the invention.

Joint or co-inventorship requires some form of communication between the inventors. It is not necessary, however, that they physically work together or for the ideas to have occurred to the co-inventors at the same time. Rather the invention is the result of collaboration, each co-inventor contributing in an original substantive way to conceiving that which is ultimately invented.