Joint Inventors

Contribution to Conception — not Just Reduction to Practice

• A person who merely reduces to practice (builds or tests) an invention already conceived by another is not an inventor
• The laboratory technician who runs the experiment designed by the inventor does not become a co-inventor simply by carrying out the experiment

Contribution to at Least One Claim

• A person qualifies as a joint inventor if they contributed to the conception of at least one claim in the patent — they need not have contributed to every claim
• If inventor A conceived claims 1–3 and inventor B conceived claims 4–5, both are properly named co-inventors

Collaboration not Required

• Joint inventors need not have worked together at the same time
• Need not have made the same type or amount of contribution
• Need not have made a contribution to every claim of the patent
• Joint inventorship is broader than traditional notions of 'team work' — the contributions can be asynchronous and unequal.

(1) Reduction to Practice without Conception

• Following the inventor's instructions to build or test a prototype
• Running experiments designed by the inventor
• Fabricating components to specifications provided by the inventor
• These are contributions of ordinary skill, not inventive conception

(2) Suggesting General Goals or Research Direction

• An R&D manager who says 'we should develop a faster algorithm for X' has articulated a goal, not an invention
• The person who actually figures out the specific technical solution is the inventor

(4) Prior Art Contributions

• A scientist who contributed to prior art that was used to develop the invention is not a co-inventor of the new invention
• Their contribution predates and is independent of the claimed invention

(6) Suggestions That Were Obvious to a POSITA

• A suggestion that a POSITA would have considered routine or obvious is not an inventive contribution
• The contribution must be beyond what would have been obvious from existing knowledge

Inequitable Conduct Risk

• If inventorship was deliberately misrepresented to the USPTO (e.g., naming a sponsor who didn't invent or excluding a true inventor who holds IP rights that would complicate the application), this may constitute inequitable conduct, rendering the patent unenforceable
• Therasense v. Becton Dickinson (Fed. Cir. 2011) set a high bar: but-for materiality AND specific intent to deceive

Disputes Over Inventorship

• Inventorship disputes can arise from: employer/employee disagreements
• Collaborative research agreements where credit is disputed
• University-industry partnerships where academic and commercial inventors both contributed

Correction of Inventorship

• Under § 256, inventorship can be corrected administratively if the error was without deceptive intent
• Requires a request to the USPTO with explanation of the error and, for adding an inventor, a declaration from the added inventor
• If litigation is already pending, court orders can also correct inventorship.

This is a Trap for the Unwary

• Because any joint owner can license without the other's consent, a joint patent can effectively be monetized against the joint owner's wishes
• If Company A and Company B are joint owners of a patent, Company A can license the patent to Company C (a competitor of Company B) for any royalty (even $1), and Company B has no recourse

The Contrast with Copyright

• In copyright law, joint owners must account to each other for profits
• In patent law, they don't have to

Cannot Sue without All Owners

• One co-owner cannot bring a patent infringement lawsuit without joining all other co-owners (mandatory joinder)
• If one co-owner refuses to join the lawsuit (and has consented to the infringer's conduct via license), the infringement action cannot proceed

Practical Implications

• In collaborative R&D agreements, always address IP ownership
• If joint inventorship is expected, specify in the agreement who owns the resulting patents (or assign full ownership to one party in exchange for appropriate compensation or cross-license)
• University-industry agreements frequently address this — universities often retain patent ownership and grant exclusive licenses.

(1) IP Ownership Assignment

• Who owns inventions made by employees of each party during the collaboration? options include: each party owns inventions by its employees
• All inventions are jointly owned (dangerous, see above)
• All inventions are assigned to one party (which may grant back licenses)

(2) License Rights

• If joint ownership results, what licenses does each party get? exclusive vs. non-exclusive? field-of-use restrictions? (3) ROYALTY SHARING: if the patent is licensed to third parties, how are royalties split? (4) PROSECUTION CONTROL: who controls prosecution of jointly owned patents? who pays the prosecution and maintenance costs? (5) ENFORCEMENT: who has the right and obligation to enforce jointly owned patents against infringers? WHO IS LIKELY TO BE A JOINT INVENTOR: look at who participated in the inventive activities (lab meetings, design sessions, brainstorming)
• Document creative contributions
• Avoid naming supervisors or funders who provided only oversight or resources

Best Practice — Inventorship Review

• After the invention disclosure is drafted, conduct a formal inventorship analysis
• For each claim, identify who contributed to the conception of that claim
• Add only those individuals
• Exclude those whose contributions were ordinary skill or reduction to practice only.