Under U.S. law, inventorship has a strict legal meaning; it is not necessarily the same as authorship. The law specifies that only those who have made independent conceptual contributions to an invention are “inventors.” If an invention involves more than one inventor, it is a joint invention. All co-inventors are co-authors of a publication describing an invention, but co-authors may not necessarily be co-inventors.
Courts have ruled that unless a person contributes to the conception of the invention, that person is not an inventor. Conception of the invention under patent law has been defined as “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.” An invention is complete and operative “if the inventor is able to make a disclosure which would enable a person of ordinary skill in the art to construct or use the invention without extensive research or experimentation.”
A patent must be filed, and may issue lawfully, only in the name of those who meet the criteria of inventorship. Willful failure to identify correctly all legal inventors on a patent application is regarded as fraud against the Patent Office. A patent application incorrectly specifying inventorship is defective; such error must be corrected since it gives a basis for invalidating the patent.
In order to determine inventorship, one must focus on the claims. The test is whether a person has made an original, conceptual contribution to any element of any claim. Only those who meet this test qualify as inventors. To be a sole inventor, a person must be responsible for the conception of the invention as described in all the patent claims.
Joint inventorship requires communication between the inventors. However, it is not necessary for the inventors to physically work together, for the ideas to have occurred to both inventors at the same time, for each inventor to have conceived the same part of the ultimate invention or made the same type of contribution, or for the inventive contributions to be of equal importance.
Independent, conceptual contributions are identified without regard to their relative scientific or commercial importance to the total invention. The patent system does not attempt to evaluate or rank the relative contributions of individual co-inventors. Each co-inventor is considered to have the same legal interest in a joint invention as any other co-inventor.
For legal and practical reasons, the status of co-inventor may not be conferred merely as a reward for hard work, friendship or even outstanding science. This means that colleagues, students, research assistants, technicians, machinists, or those who supervise them, even though they may gather supporting data or construct a practical embodiment of the invention, are not inventors unless they satisfy the legal requirements.
Determining inventorship is almost always difficult. However, it is important that this issue be settled, insofar as possible, before the patent application is filed. Determination of inventorship requires expert knowledge of the legal criteria for inventorship, and is best done by the patent attorney or agent at the time the patent application is prepared. Institutional investigators involved in the invention disclosure process should understand that preliminary determinations of inventorship made prior to the preparation of a patent application are tentative and subject to change based on the advice of the patent attorney or agent who prepares the application.
Intellectual properties developed by university faculty within the scope of their employment or through the use of their time, facilities, equipment or materials owned or paid for by the university are considered by Federal patent and copyright law to be the property of the university. In claiming title to the inventions or developments of its faculty, the university follows a policy long practiced by other universities and private corporations. However, unlike most private corporations, universities traditionally share the economic benefits with their inventors and developers.
Inventions or technology developments made by a student who is supported by the university (i.e., by a fellowship) or employed by the university or is working voluntarily on a faculty member’s research and makes substantial use of university resources, are considered by Federal patent and copyright law to be the property of the university. Federal Government Support:
The Federal government initially retains assignment of all intellectual property rights developed under federal support. However, the university may obtain assignment of all commercial rights by applying to the government. Therefore, if there is any Federal support involved in the development of a technology, notify the Innovation Commercialization Office. The government will retain a royalty-free license for the government to use any invention made with any Federal support.