Who should be listed as an inventor(s) of a patent application (USPTO)?
Patent applications filed in the United States must only list an actual inventor(s) therein. Contrastingly, many countries outside of the United States allow for an assignee (e.g., employer) to be listed as an Inventor of the patent application. It must be stressed that the penalty for improperly listing a non-inventor/assignee as an inventor or failing to include an individual who is an inventor of the claimed invention of a patent application may result in a subsequently granted patent being held as invalid.
The primary law for Inventorship (35 USC 116) states that:
“When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. 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.”
Joint Inventors
As indicated in “MPEP 2137.01 – Inventorship”:
“Information about co inventors can be found in 37 CFR § 1.45, … Joint inventors.
(a) Joint inventors must apply for a patent jointly and each must make the required oath or declaration: neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47.
(b) Inventors may apply for a patent jointly even though (1) They did not physically work together or at the same time, (2) Each inventor did not make the same type or amount of contribution, or (3) Each inventor did not make a contribution to the subject matter of every claim of the application.
(c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.”
In view of the above, it should be noted that the focus of whether an individual should be listed as an inventor of a patent application is upon the claims of the patent application. More specifically, if an individual contributes only to a single claim of the patent application, they must be listed as an inventor. Conversely, if an individual contributes to a patent application but their contribution is not realized by the claimed subject matter, they should not be listed as an inventor.
Conception
An inventor in the United States is a person(s) who “conceived the invention.” There is no requirement that a specific amount of conception be provided to be considered an inventor; instead, even a small contribution to one of the claims may result in an individual being listed as an inventor.
Accordingly, including a number of individuals as inventors on a patent application (out of courtesy, etc.) who did not contribute to the claimed invention may result in the patent being invalidated. Additionally, it should be noted that technicians who merely implement instructions provided to them are not usually considered an inventor unless they provide some sort of contribution to the claimed invention. (see MPEP 2137.01) As always, your patent attorney should be consulted to obtain legal advice regarding a specific situation.
Patent Prosecution
During patent prosecution, patent claims are frequently amended, cancelled, or added. If such actions are furthered, a review of the patent application will need to occur to determine whether the addition or removal of an inventor(s) needs to occur.