In 1859, Abraham Lincoln stated that “The patent system . . . secured to the inventor, for a limited time, the exclusive use of his invention; and thereby added the fuel of interest to the fire of genius.” As the only president who is a named inventor on a United States patent, he was keenly aware of the fire of genius within inventors. 

Many are unlikely to know Lincoln as “inventor,” as are many unlikely to know who exactly is an “inventor” or of the importance of identifying an inventor on a patent application. 

In the eyes of the United States patent law, an inventor is defined as a person who contributes to the conception of an invention as it is claimed. “Conception” is the formation in the mind of the inventor of a definite and permanent idea of the operative invention as it is thereafter to be applied in practice.  The “claims” of a patent recite “the subject matter which the applicant regards as his invention.” Like the metes and bounds description of real property, the claims define the legal boundaries of the patent’s exclusionary right. 

Reflecting the high regard that United States patent law places on inventors, it currently requires that patent applications be filed with the names of all of the inventors.  Because errors in identifying the inventors can render a patent unenforceable, invalid, or alter ownership, it is imperative that the inventors are correctly identified when the application is filed.  During litigation involving issued patents, attacks on inventorship are often launched by alleged infringers.  

The alleged infringers may seek to invalidate or render unenforceable a patent on grounds that there was a deceptive intent or inequitable conduct in naming an inventor who should not have been named or failing to name an inventor who should have been. Therefore, if mistakes in the identification of inventors are found, patent counsel should be consulted as soon as possible to correct the identification and to prevent complications.  

It may be easy to identify a solo inventor. But often, work is done collaboratively among a team and an invention may be the result of two or more joint inventors. Determining joint inventorship has been recognized by one court as “one of the muddiest concepts in the muddy metaphysics of patent law.” Yet identifying all the joint inventors remains critical to protecting the invention. 

Each joint inventor must contribute to the conception of the invention. There is no requirement, however, that the joint inventors physically work together or at the same time, that each of the joint inventors make the same type or amount of contribution to the invention, or that each joint inventor contributed to each claim.  Each of the joint inventors needs to perform only a part of the task that produces the invention.

This is not to say that every person involved with the invention is an inventor. A person who merely conducts experiments at the direction of another or merely assists the actual inventor after conception of the claimed invention is not a joint inventor.  Providing the inventor with well-known principles or explaining the prior art without having a firm and definite idea of the invention as a whole does not make one a joint inventor.  And one of ordinary skill in the art who simply reduces the inventor’s idea to practice is not a joint inventor.

Although the task may not always be easy, correctly identifying inventors helps you harness and protect the fire of genius in your patent applications.

First Published In Dallas Business Journal.