Invention involves conception of a useful idea coupled with its reduction to practice. In determining conception, more than a bare idea is required. Conception is the formation in the mind of a definite and permanent idea of the complete and operative invention as it is to be thereafter applied in practice. Reduction to practice is the realization of the idea through the making a of new device or product (or developing a new method of making or using something) or merely developing viable plans or formulas for doing so. In the alternative, “constructive” reduction to practice is achieved by filing a patent application with the United States Patent and Trademark Office.
Obviously, a person who contributes neither to the conception nor the reduction to practice of an invention is not an inventor. In addition, a person who does not contribute to the conception of an invention and merely participates in the reduction to practice of the invention as a “technician” under the control of another person is not considered an inventor. Failure to appreciate the significance of these concepts, especially if a person is intentionally included or excluded as an inventor with deceptive intent, can render a patent invalid and unenforceable. Pride, glory, greed, and even modesty, must not be considerations in an honest assessment of inventorship. Those who are actual inventors must be named in a patent application and those who are not must not.
Moreover, problems with potential third-party inventors or an inventor who no longer works with a business can make it difficult to clearly identify each of the true inventors in a patent application. These challenges can create problems in the future when the patent owner is engaged in patent infringement litigation or trying to seek a high value for a property in a business transaction or loan.
Fortunately, innocent inventorship identification mistakes can be corrected during prosecution of a patent application by adding or deleting legitimate inventors. Furthermore, it is possible to correct a patent’s inventorship even after it issues. However, not all mistakes are correctable, particularly when inventorship is deliberately misrepresented.
These risks can be mitigated by establishing sensible inventorship identification procedures. Close and objective involvement by counsel is also recommended throughout the entire process. This begins with identifying potential inventors during development and ascertaining who contributed in a material way to the conception and/or reduction to practice of each patent claim at the application filing stage. Upon allowance of a patent application, the client should again review inventorship, especially when amendments have been made that alter the scope of a patent application’s claims. The same exercise should also be conducted when continuation or divisional applications of the original patent application are filed with the Patent Office.
Accordingly, it is critical for a client and its counsel to conscientiously include all persons who should rightfully be considered inventors, and exclude those who do not, throughout the patent process.