New Jersey Law Journal – “The Art of Determining Inventorship”

By Daniel A. Scola Jr. and Kirk M. Miles
Scola is a partner and Miles is an associate with Hoffmann & Baron in Parsippany, specializing in all areas of intellectual property.

Determination of inventorship can be a difficult and complex task. The patent statute specifically recognizes that “whoever invents or discovers” inventive subject matter “may obtain a patent therefor.” 35 U.S.C. Sect. 101 Moreover, the code of Federal Regulations relating to patents clearly indicates that a patent must be applied for in the name of the actual inventor or inventors. Thus, the patent laws require the true and original inventor or inventors be named as the inventive entity or the patent is subject to unenforceability.

The determination of inventive subject matter and inventorship, therefore, requires careful and accurate legal analysis. Further, with the rapid speed of technological advances and the ever increasing need for competitive edge, filing for patent protection of one’s rights must be accomplished expeditiously. These time pressures can complicate the already difficult task of identifying correct inventorship.

Globalization of the market place has resulted in more research programs competing against each other in the same or similar technologies. Moreover, worldwide corporate mergers and takeovers have become commonplace, as large companies absorb promising smaller companies with complementary technologies. Such mergers and takeovers often result in two separate divisions working on similar technology within one corporate structure. Even within large corporations, divisions fail to communicate effectively, and often may look upon each other as competitors rather than teammates. These realities create a complicated environment in which to make inventorship determinations.

Inventorship Requirements

Too often inventors are improperly named on patent applications due to a variety of practical or political reasons. For example, it is common for inventors to be included on an application merely because they oversee the research project or because they participated on the design team, even though they do not make an inventive contribution. Thus, while some researchers assume that merely being involved in a particular research effort is sufficient to qualify them as inventors, this assumption may not hold up against the legal requirements of inventorship when the specific factual roles of the researchers are examined.

Invention involves the elements of conception, reduction to practice and diligence. Conception, though, is recognized as the key to determining inventorship. Conception is the formation in the mind of a definite and permanent idea of the complete and operative invention, as it is to be applied in practice. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1276, 231 USPQ 81, (Fed. Cir. 1986). Invention does not, however, require a reasonable basis for believing that a particular idea will work. Instead, conception is complete when the inventor has conceived the means of reducing the invention to practice and no more than routine skill would be required to do so. Rey-Bellet v. Englehardt, 493 F.2d 1380, 1387, 181 USPQ 453, (CCPA 1974).

It follows, therefore, that invention occurs when the solution to a particular problem is conceived, and no more than routine workmanship is required to put the conceived solution into practice. When a single person conceives the solution to a particular problem, that person is the sole inventor of the subject matter, regardless of the routine workmanship of others in reducing the invention to practice. When several inventors contribute to an idea, however, determining who in fact contributed to the conception that led to the solution of the problem can present uncertainties.

Section 116 of the patent statute sets forth the basis for joint invention:

The Court of Appeals for the Federal Circuit recently shed light on the requirements for joint inventorship in Hess v. Advanced Cardiovascular Systems, Inc., 41 U.S.P.Q.2d 1787 (Fed. Cir. 1996). In Hess, Dr. Simpson and Dr. Robert developed a catheter useful for balloon angioplasty, in which a catheter having an inflatable balloon is inserted into a patient’s artery to an area of blockage within the artery, and the balloon is inflated to eliminate or reduce the blockage. In attempting to find a material for the balloon, Simpson and Robert consulted with Mr. Hess, an engineer for a company which manufactures heat shrinkable material. Hess suggested that they incorporate one of his company’s known heat shrinkable materials as the balloon material to provide an adhesive-free attachment.

Simpson and Robert continued developing their invention and were granted a patent in their names, with the final product incorporating a balloon material capable of attachment to the catheter without an adhesive, but not the heat shrinkable material suggested by Hess.

Hess sued Advanced Cardiovascular Systems, Inc., the assignee of the patent rights, claiming co-inventorship of the patent and seeking a declaratory judgment of joint inventorship. The District Court held that Hess’s contributions amounted to nothing more than explaining to the inventors what the state of the art was and supplying the inventors with a product for use. On appeal, the Federal Circuit upheld the District Court’s decision, stating that “Mr. Hess’s contributions to the inventions did not constitute the conception necessary to establish co-inventorship.” Hess at 1786.

In support of the decision, the Federal Circuit relied on an 1853 ruling regarding the telegraph invention, O’Reilly v. Morse, 56 U.S. 62, in which the Supreme Court held that Samuel Morse’s discussions with scientists in connection with his invention of the telegraph did not alter his status as sole inventor. The court reasoned that “no invention can possibly be made, consisting of a combination of different elements … without a thorough knowledge of the properties of each of them.” Accordingly, the court ruled that the information provided by others in discussions with Morse were merely informational, and merely provided a means for the inventor to gather information.

Similarly, in Agawam Co. v. Jordan, 74 U.S. 583 (1868), an employee of an inventor suggested substituting one part of an inventive machine for another; the suggestion was incorporated into the patented machine. The Supreme Court implied that such a suggestion does not amount to a new method or arrangement, and ruled that the employee was not an inventor of the subject matter. Further, in Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 225 USPQ 634 (Fed. Cir. 1985), the Federal Circuit ruled that 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.

Thus, it seems apparent that, while the determination of inventorship turns on the facts of the particular case, joint inventorship clearly requires more than a mere suggestion by a party of a particular material for use with an invention or substitution of one particular material for another. The qualitative contribution of each collaborator is the touchstone of joint inventorship. Each inventor must contribute to arriving at a definite and permanent idea of the invention as it will be used in practice. Burroughs Wellcome Co. v. Barr Laboratories, Inc., 32 USPQ2d 1915, 1921 (Fed. Cir. 1994).

Tedious Analysis

Of course, applying these principles in everyday practice to determine proper inventorship can prove to be a tedious undertaking. As is apparent, inventorship involves a legal determination based on a complete evaluation of the particular facts surrounding the conception and reduction of an idea to practice.

Typically the process for applying for a patent begins with the patent attorney being presented with a patent disclosure. When that disclosure includes more than one inventor, the attorney can be tempted to draft and file the patent application naming all of the inventors identified in the patent disclosure as co-inventors without sufficient investigation as to inventorship. The patent disclosure, however, is most often prepared by technical personnel, and their determination of inventorship for purposes of the disclosure is not likely based on legal input.

Thus, ensure that a patent application names the proper inventors, the attorney must review the contribution of each of the parties involved in the development of the invention, bearing in mind the importance of the contribution to the actual conception of the invention. This investigation is particularly important when the inventors are from different organizations which may have collaborated on a particular development. Failure to address such questions early on can be disastrous, especially when the collaboration becomes hostile or a conflict in ownership results.

Additionally, once the disclosure is transformed into a patent application, the claims of the patent application must be evaluated individually based on each inventor’s contributions. It is well established that the claims of a patent determine the scope of coverage of the patent. Under the law, an individual may be named as an inventor provided at least one claim in the patent application can be attributed to the individual. Thus, it is possible that a particular inventor may have been included in the disclosure due to that inventor’s involvement in only one aspect of the invention, which becomes embodied in a dependent claim. The application, however, may undergo amendments during prosecution whereby the claim or the subject matter attributable to a certain individual may be deleted. If that individual is not a true co-inventor of the remaining claimed subject matter in the application, then the inventive entity must be changed by amendment to delete that inventor from the application. Thus, the inventorship of every claim may need to be reconsidered during prosecution, as well as preparation, of the application.

Correction of Inventorship

The patent laws provide for correction of inventorship errors which occurred either by misjoinder (improper addition of an inventor) or non-joinder (failure to name an inventor), provided such error arose without any deceptive intent. Section 116 of 35 U.S.C. allows for the correction of inventorship error in a pending application, while Sect. 256 allows for correction by certificate of an inventorship error after a patent issues. Patents in which the inventorship can be corrected through either of these sections of the patent law will not be subject to invalidation based on improper inventorship.

Correction of inventorship, however, requires not only that the error in inventorship occur without deceptive intent, but that such correction be diligently made. These requirements are not always easily met and emphasize the importance of factual and legal analysis of the inventorship prior to filing of a patent application.

In summary, the determination of inventorship involves a legal determination that must be carefully made by the patent attorney. Such determination involves a complete evaluation of the conception of the invention. When two or more persons contribute to a particular invention, the determination of inventorship is even more difficult to ascertain. Thus, it is understandable why one court has described the concept of joint invention as “one of the muddiest concepts in the muddy metaphysics of patent law.” Mueller Brass Co. v. Reading Indus., 352 F.Supp. 1357, 1372, 176 USPQ 361 (E.D. Pa. 1972).