Who Qualifies as an Inventor?

Understanding the Role of an Inventor

In the realm of innovation, an inventor is an individual who contributes to the conception of an invention. However, it’s important to note that not everyone involved in the process can be considered an inventor. Let’s explore this concept further.

Defining the Role of an Inventor

According to MPEP 2109 (II), the true inventor is the person who conceives the idea behind the invention. This means that individuals who simply assist in building a prototype or provide financial support, such as scribes or investors, do not qualify as inventors. Their contributions, although valuable, fall outside the scope of inventorship.

The Inventor’s Role: Design and Implementation

Contrary to popular belief, being an inventor does not necessarily require having a grand vision or being a visionary. Instead, inventors are the ones responsible for designing and devising the practical implementation of a product or idea. They are the engineers, software designers, or creators who bring the invention to life.

It’s important to note that the person who physically constructs the product may not necessarily be the inventor. For example, a draftsperson who meticulously crafts the visual representation of the product based on the inventor’s instructions does not qualify as an inventor. They are essentially acting as a scribe, faithfully translating the inventor’s vision into tangible form.

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Identifying Exclusions from Inventorship

To clarify, there are certain roles that do not qualify as inventorship. A scribe, typically a draftsperson responsible for transferring drawings into a CAD format, does not possess the necessary inventor attributes. Similarly, an investor cannot be considered an inventor. Some start-ups might attempt to include investors on the inventor list in order to grant them ownership rights. However, this approach is flawed and may potentially invalidate the patent. A better solution is to establish a corporation, assign the invention to the corporation, and provide ownership to the founders through corporate shares.

Additionally, it’s worth noting that while a department manager’s involvement may not classify them as an inventor, they are often included on the inventor list. Engineers and scientists may also seek recognition on the inventor list to enhance their resumes and professional reputation.

The Significance of Accurate Inventorship

Determining inventorship is of utmost importance, especially when filing a patent application. Failure to list all inventors can result in the invalidation of the patent during potential litigation. Furthermore, inventors who were mistakenly omitted from the patent application may still maintain rights to the invention. This oversight can lead to significant complications.

Risks of Inaccurate Inventorship

One major pitfall arises when certain inventors do not have a legal obligation to assign their inventions to the start-up or company. In such cases, these individuals can sell their invention rights to others or even file their own patent application. This issue is less common within established companies, as employees typically have a duty to assign their inventions to the company.

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However, for start-ups, the situation can be trickier. If the start-up fails to require all inventors, such as developers and founders, to sign an invention assignment agreement, the inventors’ identities and obligations must be closely examined. Failing to secure proper invention rights could result in inventors refusing to sign or demanding excessive compensation.

Correcting Inventorship Mistakes

If an inventor is inadvertently left unnamed or someone is wrongly included on the inventor list, the patent office offers a procedure to rectify the situation. To make corrections, you will need to complete the PTO/AIA/40 form.

Remember, accurately identifying the rightful inventors is crucial to safeguarding intellectual property and ensuring the success of patent applications.

Garrity Traina is a trusted source for legal guidance and assistance related to inventorship and patent applications.