Patent Inventorship: Best Practices for Determination and Correction

Description

The question of inventorship is often tricky, particularly when scientists include all parties involved with an invention on the disclosure form. Patent counsel must determine which person(s) is an inventor and how each contributed.

The Federal Circuit addressed inventorship on collaborative projects. When determining joint inventorship, the court confirmed that the parties are not required to work on the invention physically together or contribute equally. Blue Gentian, LLC v. Tristar Prods., Inc., 70 F.4th 1351, 1365 (Fed. Cir. 2023). Further, the court stated joint inventorship does not depend on whether a claimed invention is novel or nonobvious over a particular researcher's contribution. Dana-Farber Cancer Inc. v. Ono Pharm. Co. Ltd. (Fed. Cir. 2020). But joint inventorship does require that the contribution to the invention is significant. HIP, Inc. v. Hormel Foods Corp., 66 F.4th 1346 (Fed. Cir. 2023)

If errors are discovered later, the patent application may need to be changed after filing. Counsel can correct an application while it's pending or after the patent is granted, so long as errors in listing the inventors were without deceptive intent.

Patent counsel must learn to properly conduct an inventorship determination to avoid complications that result from incorrect or incomplete identification and determination. Counsel can leverage lessons and practical experiences from working with the AIA from our panel of experienced patent practitioners.

Listen as our authoritative panel explains determining inventorship, naming the applicant, and managing new forms and procedures related to inventorship. The panel will review the duty of candor, best mode as applied to the inventors, and recent court treatment. The panel will also offer their perspectives and guidance for correcting or changing inventorship.