So, You Think You’re an Inventor?

by: Elaine Johnson

Did you know that the term “inventor” has a strict legal definition? The rules for determining who qualifies as an inventor are established by legal statutes and judicial decisions that can differ from country to country. Erroneously listing a person on a patent application as an inventor, or omitting a person who should be listed, can seriously affect the validity of the issued patent.

There are two concepts to consider when deciding who is an inventor: conception and reduction to practice. Conception is the act of having the idea, and reduction to practice is transforming the idea it into a tangible form. Patent law requires that an inventor must either have been part of the idea stage or been involved in creating a working embodiment of the invention. If a person only conducts experiments following instructions, they are regarded simply as a ‘skilled pair of hands’ and should not be listed as an inventor.

An additional factor to be considered, is whether all inventors correctly listed on the application when filed are valid inventors when the patent has been approved. During prosecution, the Patent Examiner will raise objections relating to the scope of protection sought. Your Patent Agent will put forward arguments and amendments to accommodate the Examiner’s objections. Eventually, the Examiner and the Agent will agree on the boundaries of the Patent Owner’s rights – defined by the claims. It is crucial to review the claims to ensure that all of the inventors initially listed contributed to the subject matter defined in the allowed claim set.

Sometimes it is tempting to list a person as an inventor, to provide recognition or avoid causing offence. While this may benefit relationships, naming someone as an inventor who does not meet the legal definition could be cited by a competitor attempting to invalidate the entire patent. While getting this right may result in some difficult conversations, it in everyone’s best interest to ensure that the rules defining inventorship are respected.

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