Inventorship - What You Need to Know About It


An inventorship is generally the person who develops a particular aspect of technology. This definition generally holds true in patent law, with one small tweak, in that the legal definition of inventorship is a person or persons who contributed to the subject matter of at least one claim in a patent application is deemed a inventor for a patent application. As you look at other posts on our website you’ll learn that there are various parts of a patent application, and one of those parts is the claims that are typically at the end of the application. The claims are a series of numbered paragraphs that recite in very specific legal language exactly what the inventive concept is that the patent is put forth to protect. Put simply, the claims are the legal definition of an invention.

         Inventorship is a very important and fundamental part of every patent application. When a patent application is drafted, there may be several contributors to the description and drawing portions of the patent application. However, patent inventorship is determined only by the people who contribute to the subject matter of the claims in the patent application. As such, with a patent application, you’ll first need to draft the claims for your patent application before you can determine who the inventors are. In reality, this is usually a very simple exercise as there is a small group of people that developed the technology, and the claims cover the technology broadly such that each of the developers is legally classified as an inventor. However, we regularly see circumstances where there may be four or five technology contributors to an inventive concept, but the claims in a patent application are only directed to a narrow subset of the overall technology. As such, it’s necessary to determine with great accuracy exactly which of the technology contributors developed the aspects of the invention that are being recited in the claims in a patent application as this list is who should be listed as inventors on a patent application.  

Although this sounds like a difficult task, it’s usually fairly simple in that you can read through each element of a claim and identify who contributed to the development of each of the claim elements. Once you’re finished going through each of the claims in a patent application and identifying who the contributors are for each element of the individual claims, then the list of names you compiled becomes the list of inventors.

Inventorship - Validity and Enforcement

One very important thing that every person seeking a patent should know is that inventorship is critical to the validity and enforceability of your patent. More particularly, if the inventorship on your patent application is not accurate, then the patent that you receive will be susceptible to attack should you ever need to enforce the patent against an infringer.  As noted above, this usually isn’t a problem as most inventions are conceived by a small group of people that are the list of inventors. However, we often see larger groups of technology specialists working on specific innovations, and it’s certainly not uncommon for each person who worked on a particular innovation to believe they are an inventor, even if their contribution was ever so small. As such, we often see very large lists of inventors, especially from larger corporate clients where financial incentives are given to employees for contributing to their employer’s patent portfolio, yet the subject matter in the claims of a patent application may include only parts of the invention developed by one or two people. Similarly, with small businesses we often see the business owner or president listed as one of the inventors on a particular piece of technology. These types of practices can have devastating effects on the validity and enforceability of your patent should you ever need to enforce the patent or undergo diligence on the patent where a qualified patent attorney reviews the case file to assess the strength of the patent. Since nearly all small businesses have some sort of an exit strategy, making sure your inventorship is accurate on your patent applications is critical, as your small business company valuation can be substantially reduced if during the diligence process it’s discovered that inventorship on one of your patent assets is inaccurate. Purchasing companies will substantially reduce their valuation, and I would say this is justified, as the patent protection that they would like to purchase in conjunction with your company is susceptible to being invalid or unenforceable when it is discovered that incorrect inventors were listed on the patent.

So the moral of the story here is be very accurate when you determine your inventor list for a patent application. Go through each claim in your patent application and ask who contributed to the subject matter of each claim element. Then when you fill out the inventor list, include every name of every person who contributed to the subject matter of at least one claim in your patent application. This should give you a really good chance of having an accurate inventor list, and therefore substantially reducing the likelihood that your patent will be invalid or unenforceable down the road due to inaccurate inventorship. 

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