Patent Inventorship

File a request to correct inventorship with the USPTO — add or remove inventors. Simpler and cheaper than post-issuance correction. No certificate of correction required. Requires explanation and fee, but no court order. Best practice: correct early, while prosecution is open.

File a petition for a certificate of correction with the USPTO. Requires: written agreement signed by all named inventors, a statement from the inadvertently omitted inventor, and USPTO approval. The correction is retroactive — the patent is treated as correctly inventored from the start.

If any named inventor does not agree, a court order is required. Correction cannot cure deceptive intent — intentional misjoinder or non-joinder with deceptive intent remains grounds for inequitable conduct.

Where inventorship is disputed (e.g., a co-inventor who left the company claims inventorship and ownership), the correct remedy is a district court action for correction of inventorship under § 256 combined with an action for co-ownership of the patent. Courts can order USPTO to issue a certificate of correction.

What makes someone a patent inventor under US law?

Under US patent law (35 U.S.C. § 100), an inventor is the person (or persons) who conceived the claimed invention. Conception is the critical act — not building the prototype, not funding the research, not managing the project. The legal standard for conception is 'the complete performance of the mental part of the inventive act... a definite and permanent idea of the complete and operative invention' (Hyatt v. Boone, Fed. Cir. 1999). Inventorship is determined claim by claim: a person is a co-inventor if they contributed to the conception of at least one claim in the patent. A person who contributed to invention A (claim 1) but not invention B (claim 2) is a co-inventor for the patent as a whole if both claims are in the same patent. A person is NOT an inventor if they: (1) only reduced the invention to practice (built the prototype, ran the experiments) without contributing to the conception; (2) directed general research without contributing specific conceived elements to any claim; (3) explained existing technology or prior art; (4) funded or sponsored the research; (5) implemented a specified design without contributing anything conceptually new to the claims. Getting inventorship wrong — either by including non-inventors (misjoinder) or excluding true inventors (non-joinder) — can result in patent invalidity if the error was made with deceptive intent.

How does joint inventorship work?

Joint inventorship (35 U.S.C. § 116) occurs when two or more persons contribute to the conception of a claimed invention. Under § 116, joint inventors may apply together even if: (1) they did not physically work together at the same time; (2) each did not make the same type or amount of contribution; (3) each did not contribute to the subject matter of every claim. The key requirements for joint inventorship: (1) each joint inventor must have contributed to the conception of at least one claim; (2) the inventors must have collaborated in some sense — they must have worked toward a common inventive goal, even if independently or sequentially. If two people independently develop the same invention without collaboration, they are separate inventors, not joint inventors. Legal consequences of joint inventorship: (1) each joint inventor is an equal undivided co-owner of the entire patent — no automatic royalty split; (2) each joint inventor can independently license (or assign) their interest without the consent of other co-inventors (absent a contrary agreement); (3) any co-inventor can separately file a patent application including the co-invented claims; (4) each co-inventor must separately sign the oath/declaration. For startups: joint inventorship without a clear assignment agreement can cause serious problems — a disgruntled co-inventor who leaves can license the patent independently. Always pair inventorship determination with proper assignment agreements.

What happens if the wrong inventors are named on a patent?

The consequences of incorrect inventorship depend on whether the error was intentional and whether it is correctable. Two types of inventorship errors: (1) Non-joinder: omitting a true inventor from the named inventors. Under pre-AIA law (§ 102(f)), a patent was invalid if any inventor was omitted. Under post-AIA law, the patent can be corrected under § 256. If the omission was deliberate (deceptive intent), it may constitute inequitable conduct, which is an equitable defense rendering the patent entirely unenforceable — even if all claims are valid. (2) Misjoinder: naming a person as inventor who is not one. Under pre-AIA law, misjoinder with deceptive intent invalidated the patent. Under post-AIA law, the error is correctable under § 256. Non-deceptive misjoinder alone does not invalidate a post-AIA patent. Correction under 35 U.S.C. § 256: inventorship can be corrected in an issued patent by filing a certificate of correction with the USPTO. Requirements: all named inventors must agree (or a court order); the USPTO reviews the correction request. The correction is retroactive — the corrected patent is treated as if it always had the correct inventorship. During prosecution: § 116 allows amendment of inventorship before the patent issues with a much simpler process. Always determine inventorship carefully before filing — corrections after issuance require all inventor signatures and USPTO review.

Does a manager or supervisor who directed the invention qualify as an inventor?

No. A manager or supervisor who directed research without contributing to the conception of the claimed invention is not an inventor. This is one of the most common inventorship mistakes in corporate settings. The legal standard is clear: someone who gave general direction ('solve this engineering problem' or 'we need a faster algorithm for X') without contributing specific ideas that appear in the claims is not an inventor. The fact that the supervisor funded the work, managed the team, approved the budget, or contributed the original business problem does not make them an inventor. What would make a supervisor an inventor: if they contributed a specific technical idea — a step in a method, a structural element, a specific combination — that was incorporated into at least one claim. 'Come up with a way to do X' is a manager's direction. 'Do it by combining Y with Z in the following specific way' is conception — and if that specific approach ended up in the claims, the supervisor is a co-inventor. Common pressure situations: senior researchers or executives sometimes pressure employees to add their names as inventors for prestige, funding, or career reasons. This is scientific fraud and can invalidate the patent if there is deceptive intent. The reverse is also problematic: a company trying to exclude a difficult employee from inventorship when that employee did contribute — this can expose the company to invalidity, ownership claims, and litigation by the excluded inventor.

What are derivation proceedings and when are they used?

Derivation proceedings (35 U.S.C. § 135) are an administrative proceeding before the USPTO's Patent Trial and Appeal Board (PTAB) available under the America Invents Act (AIA) for post-AIA patents (those with effective filing dates on or after March 16, 2013). A derivation proceeding allows an applicant (or patent owner) to challenge another applicant who they believe derived the claimed invention from the petitioner — meaning the respondent filed a patent application on an invention that the petitioner conceived and communicated to the respondent. Key requirements: (1) the petitioner must be the earlier-conceiving inventor; (2) the respondent must have had access to the petitioner's conception; (3) the petition must be filed within 1 year of the publication of the first claim of the respondent's application that is alleged to have been derived. The PTAB determines whether: (a) an inventor named in the respondent's application derived the invention from an inventor named in the petitioner's application; and (b) the filing of the respondent's application without permission was unauthorized. What derivation replaces: under pre-AIA law, interference proceedings determined which party was the first to invent when two applications claimed the same invention. AIA's first-inventor-to-file system eliminated interferences for post-AIA applications (two parties now: whoever files first wins) but created derivation proceedings as a remedy for outright theft or derivation of inventions.