Under United States patent law, an inventor is a person who contributes to at least one claim of the patent application. The threshold question to determine if a person is an inventor is who conceived the invention. MPEP Section 2137.01 provides additional guidance regarding the definition of an inventor. See MPEP 2137.01. As always, you should seek the advice of a patent attorney to determine if inventorship is correct.
Joint Inventorship (Co-Inventorship)
When two or more individuals are inventors for an invention claimed in a patent application, the inventors are referred to as joint inventors or co-inventors. When an invention is made by two or more persons jointly, they shall apply for the patent jointly. Joint inventors do not have to (1) physically work together, (2) work at the same time, (3) make the same type or amount of contribution to the invention, or (4) contribute to every claim of a patent. (35 U.S.C. § 116.) All that is required to be a joint inventor is that the person (1) contributes in some significant manner to the conception of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, and (3) do more than merely explain to the real inventors well known concepts. Pannu v. Iolab, 155 F.3d 1344, 1351 (Fed. Cir. 1998).
Importance of Inventorship
In the United States, it is imporant to identify the true and correct inventors because of at least the following:
- United States patent law requires that the applicant for a
patent be the inventor(s).
- The inventor(s) are deemed to be the
owners of the patent rights unless there is a patent assignment
- A patent can become invalid and/or unenforceable if the correct
inventors are not named in a patent application.
- An omitted inventor may assert state law claims based on misappropriation.
Who Is NOT an Inventor
The following is a brief listing of what does not qualify as an inventor:
- Business Entities – A business entity such as a
corporation or a limited liability company cannot be an inventor since
they are not a person.
- Person Paying the Bills – A person who merely is
paying for the development of an invention and/or a patent application
is not an inventor.
- Non-Contributors – A person who does not contribute
to the conception of the invention is not an inventor.
- Suggesting Result Only – A person who merely
suggests a desired result without any suggestion as to the
means of accomplishing the desired result is typically not an
- Following Instructions Only – A person who merely
follows the instructions of an inventor is not an inventor (e.g. a CAD
draftsperson preparing drawings; prototype manufacturer). However,
if the person conceives of an improvement to the invention they may be
considered a co-inventor.
- Insignificant Contribution – A person who merely contributes an insignificant contribution is typically not an inventor (e.g. suggesting using aluminum instead of steel for a frame).
Common Inventor Questions
1. How Many Inventors for a Patent Application?
A patent application can have a single inventor or multiple inventors referred to as “joint inventors” or “co-inventors”. There is no limit on the total number of inventors that can be named in a patent application, however, all of the named individuals must be an inventor.
2. Can Inventorship Change?
Yes. Inventorship in a patent application can change for various reasons. For example, if Inventor B only contributed to Claim 4 of a patent application and Claim 4 is canceled, Inventor B would have to be removed as a co-inventor on the patent application. As another example, if a non-inventor is incorrectly listed as a an inventor or a true inventor is not listed as an inventor when the patent application is initially filed, the inventorship of the patent application can be corrected assuming there was was no intent to mislead the USPTO.