Determining Inventorship

Determining the inventors of a new technology can be a difficult task. Much different from determining authorship on an academic publication, inventorship is actually a legal determination: An inventor must contribute to the conception of at least one aspect of the invention described. Conception requires the use of the "inventive faculties"; it is the creative formulation of a complete view of what the invention is. For example, if someone goes to the chemical closet and selects a compound for testing as a therapeutic agent to treat a particular disease, that person has conceived that the compound may be useful for treating that disease, and the conception is complete. Testing to prove that the conception is correct is called "reduction to practice." Reduction to practice, however, is not part of the inventing process unless it leads to refinement of the inventive concept.

The following examples serve to describe someone who is not an inventor:

• The "Pair of Hands"
  Someone who merely serves as a "pair of hands" is generally not an inventor. In the university setting, it can sometimes be unsettling to decide that graduate students, post-doctoral students or colleagues are really "pairs of hands," because you may value their contributions, and their investments of time and effort may have been substantial. Nevertheless, if they carried out experiments at your instruction, even though they may have been the first to see the results, they are probably not inventors.


• The Information Provider
  Another type of person who is not an inventor is one who provided information that might have been obtained from books, even if it would have been incredibly tedious to locate such information.

A simple example that is often helpful in determining inventorship is as follows. Suppose you have invented an "ergonomic" screwdriver. You take your drawing of the screwdriver to a local machinist, and he makes one for you. This does not make him an inventor. Even if he gave you a great deal of information about the virtues of using various types of materials, if you are ultimately the one who selected the material to be used, he is still not an inventor on the project. But if, when you go to pick it up, you find that he modified the handle from your original drawings, and if you accept that modification, he probably is an inventor; he has contributed to the inventive concept.

Changing Inventorship
Fortunately, the U.S. Patent and Trademark Office does allow inventors to be added to a provisional patent application — and for inventors to be added to or deleted from a regular application — provided that there was no "deceptive intent" on the part of the inventors when the error was made. If there was deceptive intent, the patent rights may be irrevocably lost. Therefore, include only those people you believe in good faith to be inventors.

Still not sure? Call the Patent Foundation at 434.924.2175 for help determining inventorship in your specific situation.

Next: Determining Authorship