Articles

Who Is The Inventor?
And Why Does It Matter?

Frederick G. Michaud

I. Introduction

United States patent law has the unique requirement that the inventors of claimed subject matter must apply for a patent in their own names, and that the inventors must be correctly named or the issued patent may be invalid. While the ultimate penalty for naming the wrong inventors is harsh, invalidity can be avoided by correcting inventorship at the patent application stage (35 U.S.C. § 116) or after the patent issues (35 U.S.C. § 256). At the application stage, an inventor may be removed or added if the error was made “without deceptive intention” on the part of the affected inventor. After the patent issues, an inventor may be removed regardless of the reason for the error, while an inventor may be added only if “such error arose without any deceptive intention on his part . . . .” 35 U.S.C. § 256; see Stark v. Advanced Magnetics, Inc., 119 F.3d 1551, 1556 (Fed. Cir. 1997). Section 256 of the statute specifies that the error shall not invalidate the patent “if it can be corrected as provided in this section.”

II. Proving Inventorship

A. The Legal Standard For Proof Of Inventorship

Inventorship is a legal issue that rests on factual underpinnings. C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 1352 (Fed. Cir. 1998); Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 981 (Fed. Cir. 1997) (“[W]hether particular suggestions and contributions of third persons amount to co-inventorship turns on the facts of the particular case.”). The legal standard for proving misjoinder or nonjoinder of inventors is clear and convincing evidence. C. R. Bard, 157 F.3d at 1352 (“An assertion of incorrect inventorship must be based on facts proved by clear and convincing, corroborated evidence.”). This heightened standard “applies without regard to the circumstances of a particular case.” Hess, 106 F.3d at 980.

B. The Requirement Of Corroboration

Evidence of invention must be independently corroborated. Fina Oil and Chemical Co. v. Ewen, 123 F.3d 1466, 1474 (Fed Cir. 1997) (“Of course, every putative inventor must nonetheless provide corroborating evidence of any asserted contributions to the conception of the invention. Like conception of the entire invention, a contribution to conception is a mental act which cannot be accurately verified without corroboration.”). The need for corroboration stems from a historical distrust of uncorroborated oral testimony of prior invention. See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998). Typically, corroboration takes the form of testimony of co-workers who are not named inventors, laboratory notebooks, or other documentary evidence of conception. The sufficiency of corroborating evidence is analyzed by a “rule of reason” test. Price v. Symsyk, 988 F.2d 1187, 1194 (Fed. Cir. 1993). The Federal Circuit explained in Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1461 (Fed. Cir. 1998):

Corroborating evidence may take many forms. Often contemporaneous documents prepared by a putative inventor serve to corroborate an inventor’s testimony. See [Price v. Symayk, 988 F.2d] at 1195-96. Circumstantial evidence about the inventive process may also corroborate. See Knorr v. Pearson, 671 F.2d 1368, 1373, 213 USPQ 196, 200 (C.C.P.A. 1982) (“[S]ufficient circumstantial evidence of an independent nature can satisfy the corroboration rule.”). Additionally, oral testimony of someone other than the alleged inventor may corroborate. See Price, 988 F.2d at 1195-96.

C. An Inventor Must Contribute To At Least One Patent Claim

Determining who is an inventor under U.S. patent law starts with an examination of the patent claims. The invention is defined by the claims, so a contribution that qualifies someone as an inventor must relate to some aspect of one or more of the claims. Ethicon, 135 F.3d at 1460. (“[A] co-inventor need not make a contribution to every claim of a patent. See 35 U.S.C. § 116. A contribution to one claim is enough.”).

In Eli Lilly and Company v. Aradigm Corp., 376 F.3d 1352, 1356 (Fed. Cir 2004), the claims at issue required inhaling an insulin analog called lispro “which rapidly disassociates into a monomeric form producing a relative bioavailability greater than twice that seen after the inhalation of a similar amount of recombinant human insulin.” Lispro was invented by a Lilly scientist. It was known that lispro rapidly disassociates into a virtually entirely monomeric form following subcutaneous administration. Aradigm was in the business of creating and marketing inhalants. Lilly and Aradigm held four meetings to discuss a possible collaboration that would take advantage of Lilly’s expertise in insulin compounds and Aradigm’s expertise in aerosolized drug delivery. Lilly insisted that its scientists conveyed to Aradigm the specific advantages to be expected from using lispro instead of regular insulin in an aerosol delivery device. The court reviewed the evidence and found it insufficient to support the jury’s verdict that Lilly’s scientist, Dr. DiMarchi, was a joint inventor because there was no proof that he had conveyed the claimed concept:

None of this testimony directly states that Dr. DiMarchi communicated to Aradigm that the bioavailability of aerosolized insulin could be increased twofold by using lispro rather than natural insulin. Evidence that Dr. DiMarchi merely suggested that Aradigm try lispro in its aerosol delivery devices is insufficient to support the jury’s verdict on claim 6 by clear and convincing evidence.”)

376 F.3d at 1363.

D. An Inventor Must Contribute To Conception Of The Invention

An inventor must have a role in the conceiving the invention. Fina Oil, 123 F.3d 1473 (“Conception is the touchstone to determining inventorship.”). Thus, a joint inventor “must contribute in some significant manner to the conception of the invention.” Joint inventors need not contribute equally to conception:

The conceived invention must include every feature of the subject matter claimed in the patent. See Sewall[v. Walters], 21 F.3d [411,] 415 [(Fed. Cir. 1994)]. Nevertheless, for the conception of a joint invention, each of the joint inventors need not “make the same type or amount of contribution” to the invention. 35 U.S.C. § 116.” Rather, each needs to perform only a part of the task which produces the invention.

Ethicon, 135 F.3d at 1460.

Conception is defined as “the complete performance of the mental part of the inventive act . . . .” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985). “[E]ach inventor must contribute to the joint arrival at a definite and permanent idea of the invention as it will be used in practice.” Burroughs Wellcome Co. v. Barr Lab., 40 F.3d 1223, 1229 (Fed. Cir. 1994). The idea must be more than just a “bare idea.” Id. It “must be definite and permanent in the sense that it involves a specific approach to the particular problem at hand.” Id. at 1229-30. An idea is sufficiently “definite and permanent” and conception of an invention is complete when “only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.” Id. at 1228.

E. Joint Invention Requires Collaboration

By its very nature, joint invention requires joint contribution to conception of the invention through some means of collaboration. See Lilly, 376 F.3d at 1359 (“[T]he alleged joint inventor seeking to be listed on a patent must demonstrate that his labors were conjoined with the efforts of the named inventors. Joint inventorship under section 116 can only arise when collaboration or concerted effort occurs -- that is, when the inventors have some open line of communication during or in temporal proximity to their inventive efforts . . . .”).

Collaboration can take the form of “working under common direction, one inventor seeing a relevant report and building upon it or hearing another’s suggestion at a meeting. . . .” Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 917 (Fed. Cir. 1992). The statute suggests that a minimal amount of collaboration will suffice; inventors can jointly apply for a patent “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.

F. The Line Between Inventive And Non-Inventive Contributions

“The line between actual contributions to conception and the remaining, more prosaic contributions to the inventive process that do not render the contributor a co-inventor is sometimes a difficult one to draw.” Lilly, 376 F.3d at 1359; see Jamesbury Corp. v. United States, 518 F.2d 1384, 1396 (Ct. Cl. 1975). The determination is fact specific:

[35 U.S.C. § 116] sets no explicit lower limit on the quantum or quality of inventive contribution required for a person to qualify as a joint inventor. Rather, a joint invention is simply the product of a collaboration between two or more persons working together to solve the problem addressed. The determination of whether a person is a joint inventor is fact specific, and no bright-line standard will suffice in every case.

Fina Oil, 123 F.3d at 1473 (citation omitted).

While there is no “bright-line standard,” it is clear that the contribution must relate to conception of the claimed invention. Lilly, 376 F.3d at 1359; C. R. Bard, 157 F.3d at 1352 (“Thus facts relevant to inventorship are those showing the conception of the invention, for others may provide services in perfecting the invention conceived by another without becoming an “inventor” by operation of law.”). Case law also suggests that the contribution to conception must be “not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Fina Oil, 123 F.3d at 1473. The court in Fina Oil did not reach a conclusion about inventorship because it merely held that the facts were in dispute and summary judgment was not proper. However, it explained:

[O]ur precedent provides guidance as to what types of acts are, or are not, sufficient in quantum and quality to establish joint inventorship. One need not alone conceive of the entire invention, for this would obviate the concept of joint inventorship. However, a joint inventor must contribute in some significant manner to the conception of the invention. As such, “each inventor must contribute to the joint arrival at a definite and permanent idea of the invention as it will be used in practice.” Burroughs Wellcome, 40 F.3d at 1229.

If a person supplies the required quantum of inventive contribution, that person does not lose his or her status as a joint inventor just because he or she used the services, ideas, and aid of others in the process of perfecting the invention. See Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985). However, those others may also in appropriate circumstances become joint inventors by their contributions. In addition, a person is not precluded from being a joint inventor simply because his or her contribution to a collaborative effort is experimental. See Burroughs Wellcome, 40 F.3d at 1229.

The basic exercise of the normal skill expected of one skilled in the art, without an inventive act, also does not make one a joint inventor. See Sewall, 21 F.3d at 416. Therefore, a person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known in the current state of the art. See Hess, 106 F.3d at 981. The case law thus indicates that to be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.

123 F.3d at 1473.

In Hess v. Advanced Cardiovascular Sys., Inc., the Federal Circuit held that Mr. Hess was not entitled to be named as a co-inventor. Mr. Hess was an engineer at a company that manufactured tubing. The inventors, two doctors trying to find a way to make a balloon angioplasty catheter, were referred to Hess because his company was one of the largest manufacturers of heat shrinkable material and “might have some material” with which they could work. Hess, 106 F.3d at 977. The doctors explained what they were attempting to do, the problems they had encountered, and their need for a new material. Mr. Hess suggested specific tubing made by his company and described in detail how it worked and might be used for their application. The doctors then experimented for some time without Mr. Hess’ assistance but using the tubing he suggested, and eventually they developed and patented a successful balloon catheter using the suggested tubing.

The Federal Circuit noted that the principles Mr. Hess explained to the doctors were well known and found in textbooks. The court stated that the extensive research and development work that produced the catheter was done by the two doctors, and “Mr. Hess did no more than a skilled salesman would do in explaining how his employer’s product could be used to meet a customer’s requirements.” Hess, 106 F.3d at 981. It held that whatever contribution Mr. Hess made did not constitute conception.

In reaching this result, the court quoted an 1853 Supreme Court case involving Samuel Morse’s invention of the telegraph. That court held that Morse’s discussions with scientists did not alter his status as sole inventor:

No invention can possibly be made, consisting of a combination of different elements . . . without a thorough knowledge of the properties of each of them, and the mode in which they operate on each other. And it can make no difference, in this respect, whether [the inventor] derives his information from books, or from conversation with men skilled in the science. If it were otherwise, no patent, in which a combination of different elements is used, could ever be obtained.

O’Reilly v. Morse, 56 U.S. 62, 111 (1853). See also Shatterproof Glass Corp. v. Libby-Owens Ford, Co., 758 F.2d 613, 624 (Fed. Cir. 1985) (“An inventor ‘may use the services, ideas, and aid of others in the process of perfecting his invention without losing his right to a patent.’”).

Interestingly, courts often frame the test for an inventive contribution in negative terms, i.e., what acts are not inventive. Thus, in finding lack of an inventive contribution in Lilly, the Federal Circuit stated:

Contributions to realizing an invention may not amount to a contribution to conception if they merely explain what was “then state of the art,” Hess, 106 F.3d at 981, if they are too far removed from the real-world realization of an invention, see, e.g., Garret Corp., 422 F.2d at 881 (“One who merely suggests an idea of a result to be accomplished, rather than means of accomplishing it, is not a joint inventor.”), or if they are focused solely on such realization, see, e.g., Ethicon, 135 F.3d at 1460 (“[O]ne does not qualify as a joint inventor by merely assisting the actual inventor after conception of the claimed invention.”).

Lilly, 376 F.3d at 1359.

One commentator has suggested that an important factor in finding joint inventorship is the specificity of the concept contributed to the invention. Robert W. Harris, Conceptual Specificity as a Factor in Determination of Inventorship, 67 J. PAT. & TRADEMARK OFF. SOC’Y 315, 318-319 (1985). This makes sense in the context of those cases in which the unnamed inventor merely suggested a broad idea or a desirable result or merely posed the problem. See Garrett Corp. v. United States, 422 F.2d 874, 881 (Ct. Cl. 1970)(“[T]he most that can be said on this record for Bicknell’s participation in the inventive effort is that he apparently suggested the broad idea of a water ballast pocket.”); Morgan v. Hirsch, 728 F.2d 1449, 1452 (Fed. Cir. 1984) (“There is no evidence that [Morgan] had in mind a specific stitch structure [for a knitted thermal fabric] . . . . ‘He only posed the problem.’. . . But asking someone to produce something without saying just what it is to be or how to do it is not what the patent law recognizes as inventing.”).

Another factor, often dispositive, is the state of the inventive concept before the putative joint inventor entered the picture. For example, the aspiring inventor is not a joint inventor if the named inventor already had a complete and definite conception of the invention and merely used the assistance of others to implement a specific embodiment of the invention (i.e., to reduce the invention to practice) or to carry out experiments he or she specified. See W. Fritz Fasse, Harvard Journal of Law and Technology, Vol. 5, Spring Issue, 153, 197-198 (1992) and cases cited therein.

Ultimately, proving or disproving inventorship will be fact-driven so, indeed, there is no bright-line test. It is prudent in considering inventorship disputes to read the many Federal Circuit decisions on inventorship, as well as those of its predecessor courts, the Court of Claims and the Court of Customs and Patent Appeals, to see how these courts have handled similar fact patterns.

III. Common Contexts For Inventorship Disputes In Litigation

A. Challenges In Patent Infringement Litigation

A patent’s validity can be challenged on the grounds that the patent names the wrong inventors, but invalidity defenses based on improper inventorship rarely succeed. It is difficult to prove that an error in designation inventorship was made in a way that cannot be corrected under 35 U.S.C. § 256. Even when deceptive intent is in evidence, it is rare that the error occurred through the deceptive intent of the inventor who was omitted, and the deceptive intent of others is irrelevant. See Stark, 119 F.3d at 1556. As a caution, however, while deceptive intent on the part of one of the named inventors may not prevent correction of inventorship, proof that the improper joinder or misjoinder of inventors occurred with deceptive intent on the part of any one connected with the patent prosecution, including the named inventors, may render the patent unenforceable for inequitable conduct. Id.

Inventorship also may be disputed in patent infringement litigation to obtain an interest in the patent rights. For example, an ownership interest or a license from an owner turns an otherwise-unauthorized use of the patent into an authorized use. A successful defense of authority to use the patent (by virtue of being one of its rightful inventors and thus an owner) defeats the infringement claim.

Specifically, any contribution to the invention that qualifies as inventorship can result in ownership rights. Ethicon, 135 F.3d at 1465 (“[I]n the context of joint inventorship, each co-inventor presumptively owns a pro rata undivided interest in the entire patent, no matter what their respective contributions.”). Each owner of a patent is entitled to use the patent or license it to others “without the consent of and without accounting to the other owners,” unless there is an agreement to the contrary. 35 U.S.C. § 262. This has sometimes led to inventorship disputes in patent infringement litigation whereby a defendant attempts to add an inventor in order to gain an interest in the patent and use that interest as a defense to the litigation. For example, in Ethicon, the defendant discovered that there was an unnamed inventor who had no obligation to assign ownership of the patent to the plaintiff. The defendant entered into a license agreement with the unnamed inventor, successfully had the court name the unnamed inventor as a co-inventor, and then used the license as a defense to the infringement suit.

B. Litigation Under 35 U.S.C. § 256 To Change Inventorship

Claims seeking a change of inventorship under 35 U.S.C. § 256 are usually brought either to obtain an ownership interest in the patent or to gain financial benefits from being named an inventor.

An ownership interest may be sought when companies work together and, after their collaboration ends, patent applications on the subject matter of the joint work are filed, naming only one company’s employees as inventors. If there is no agreement as to ownership of inventions or the agreement pertains only to joint inventions, the omitted company may sue under 35 U.S.C. § 256 to establish sole or joint inventorship of the patents as a way to obtain an ownership interest in the patents. See, e.g., Eli Lilly, 376 F.3d at 1356-57. If the omitted company wins, whether its employees are judged to be sole or joint inventors, the two companies are free to use the inventions without accounting to each other. 35 U.S.C. § 262.

Financial benefits may flow from being named as an inventor regardless of ownership. Corporate and university inventors are often rewarded as an incentive to invent either through fixed money payments or a share of any royalties collected for use of the invention. So the inventor whose name is improperly left off of a patent may suffer financially even though he has an obligation to assign their patent rights to the company or the university. In addition, a patent issued in the name of a researcher can add to the researcher’s prestige in his field. Both the financial rewards and prestige of inventorship supply a motive to sue for correction of inventorship under 35 U.S.C. § 256. See Chou v. The University of Chicago, 254 F.3d 1347 (Fed. Cir. 2001).

IV. Conclusion

Challenging inventorship of a United States patent is a potentially fruitful defensive approach in patent litigation. It can also be used in the context of 35 U.S.C. § 256 as a way to gain ownership rights or financial benefits. However, a successful inventorship challenge is difficult because of the evidentiary burden of clear and convincing evidence both as to appropriate facts and corroboration. To succeed, the would-be additional inventor must show a specific contribution to conception of the claimed invention that is significant as measured against the full invention. This is a difficult hurdle in an environment in which courts are reluctant to add an inventor to an issued patent.

Mistakes in designation of inventorship should therefore be carefully avoided or, when possible, cured at the patent application stage before the issue becomes adversarial.

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1See 35 U.S.C. § 111 (“An application for patent shall be made, or authorized to be made, by the inventor . . . .”); 35 U.S.C. § 115 (“The applicant shall make oath that he believes himself to be the original and first inventor . . . .”); 35 U.S.C. § 116 (“When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath . . . .”). There is also a requirement for identity of inventorship between a U.S. application and an application claiming priority of a foreign application under 35 U.S.C. § 119. See Manual of Patent Examining Procedure (MPEP) 2137.01. Noncompliance with any of these provisions may be raised as an invalidity defense in an infringement action. 35 U.S.C. § 282(2). Also, a U.S. patent is granted to the “first to invent,” not the first to file. See 35 U.S.C. § 102(g). This rule can give rise to a “patent interference” procedure in which the United States Patent and Trademark Office (PTO) determines which of competing inventors is entitled to a patent.

2The United States Court of Appeals for the Federal Circuit has determined that the “deceptive intention” language of 35 U.S.C. §§ 116 and 256 is applied differently in these respective provisions because of a comma in § 116 that does not appear in § 256. Stark, 119 F.3d at 1555.

3While not discussed herein, inventorship also can affect the extent of the prior art. For example, publications within certain time frames may not be prior art to a named inventor, but could be if that person were not named.

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