Inventorship is a legal determination based on the patent laws (discussed below) and a technical analysis of the claims in a patent application.
The threshold question in determining inventorship is who conceived of the invention. Unless a person contributes to the conception of the invention, he or she is not an inventor. The inventor is not required to reduce the invention to practice.
Conception is the formation in the inventor’s mind of a definite and permanent idea of the complete and operating invention as it is to be applied in practice. Conception requires a contemporaneous recognition and appreciation of the invention.
Conception is established when the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the extensive experimentation to make the invention operative.
Merely hoping that something will work does not establish conception, since there is not a definite understanding or a reasonable expectation that the invention will work.
An inventor may consider and adopt ideas, suggestions and materials derived from many sources. Examples include a suggestion from an employee, a hired consultant or a friend even if the adopted material proves to be the key that unlocks the problem so long as the inventor “maintains intellectual domination of the work of making the invention down to the successful testing, selecting or rejecting.
But simply suggesting an idea of a result to be accomplished, rather than the means of accomplishing it, does not make someone a co-inventor.
A coinventor need not make a contribution to every claim of a patent. A contribution to one claim is enough. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. 35 U.S.C. 116.
It is important to work with a qualified patent attorney in order to make a proper determination of inventorship. Failing to name all of the inventors on a patent application can have serious legal consequences.
