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PATENT LAW

Will Collaborator Who Provided Only Test Facilities Be Considered Co-inventor?

Reader Question: In my research lab, I had a concept and method I believed patentable, but needed (and eventually found) a fellow PI who could provide the testing lab and facilities. The concept works. This collaborator did not contribute to its conception. Will he be considered a co-inventor on the patent?

Expert Comments:

This is a great question that is asked quite often by those interesting in filing a patent application. The short answer is No, the collaborator testing the concept is not an inventor. Under U.S. law, an inventor is the one who contributed to the invention's conception — not merely one who assists in reducing the concept to practice.

There is no requirement that the inventor be the one to reduce the invention to practice as long that was done on the inventor's behalf, as is the case here. But one who merely reduces to practice or carries out experiments designed by another is not the inventor and cannot be co-inventor.

Because inventorship relates to the claims in a patent application, determining who an inventor is under the patent law is sometimes difficult. Inventorship is determined independently for each claim.

Because claims often are broadened, narrowed, added to, or deleted from during prosecution (negotiations with the U.S. Patent and Trademark Office), the correct inventive entity may change over the course of prosecution. Inventorship must be updated as the need arises.

Also, it is important to understand that inventorship decisions are based on factual evidence. Inventorship is a legal question that must be determined by a patent professional.  It should not be influenced by non-legal factors (e.g., office politics and business). Nor can political considerations (e.g., supervisors taking credit for the inventions of subordinates) or business considerations (e.g., not naming inventors who work outside the company- joint inventors) enter into the decision. In fact, a patent can be invalidated if it is found to be based on an incomplete, biased, or politically motivated investigation.

Because of the harshness of this penalty, liberal correction procedures are available to remedy the improper naming of inventors. Under these procedures, inventors can be added, removed, or substituted. The rules require that the error must have been made without deceptive intent.

A further requirement is that the application to correct inventorship be made diligently after discovery of the error. Therefore, to prevent potential problems, researchers, scientists, and engineers involved in the invention process should cooperate fully with the patent professional to aid him or her in obtaining all the facts required to make the correct inventorship determination.

Comments by Sara D. Vinarov, PhD, JD, patent attorney with Quarles & Brady LLP, Chicago.