Being Excluded As An Inventor?

Photo by Clark Tibbs on Unsplash

Since in the US patent system, inventorship is recognized instead of the company to whom the inventor may be obligated to assign their rights, inventorship issues–especially in big companies–seem to have become commonplace. Managers (incorrectly) claiming to be inventors, rightful inventors being excluded from a patent application, adding names of other people who are not really inventors, etc., are some of the most common issues inventors complain about.

Who can rightfully claim to be an inventor?

As stated in MPEP Section 2137.01:

The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor. … One must contribute to the conception to be an inventor. One who suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not an coinventor.

(Internal citations omitted).

Therefore, to be named as an inventor each individual must have contributed to the concept of what is now called the invention, not just suggest an idea of a result that should be accomplished. Contributing towards the concept of the invention would mean to exert dominion over how to implement the idea. However, actual implementation of the concept is not required. The law only requires that the invention be disclosed sufficiently enough such that another person, in the same field as the inventor, can read the patent disclosure and is able to reproduce the invention without any significant input on their own.

Can my company manager claim to be an inventor?

Often software developers and hardware engineers work in independent teams, each team led by a team leader, who further report to a manager. There are numerous instances where managers claim to be inventors in a patent application. Developers do not object to such assertions. While this may seem politically correct to do so to butter one’s way up the corporate chain, if untrue, the patent can be invalidated as explained further.

When can a manager claim to be an inventor?

MPEP Section 2137.01 states:

In arriving at … conception [the inventor] may consider and adopt ideas and materials derived from many sources … [such as] a suggestion from an employee, or hired consultant … so long as he maintains intellectual domination of the work of making the invention down to the successful testing, selecting or rejecting as he goes…even if such suggestion [or material] proves to be the key that unlocks his problem.

Thus, a manager can claim to be an inventor as long as he or she maintains intellectual domination of the work, even if the ideas of the invention were suggestions of employees.

Intellectual domination means that the manager needs to be actively making decisions as to how to solve a problem accepting and rejecting ideas, not simple expressing or reiterating the desired result that needs to be accomplished.

Contribution to an idea requires “a particular solution to the problem at hand, not just a general goal or research plan.” In re Verhoef, 888 F.3d 1362, 1366 (Fed. Cir. 2018). An inventor’s contribution cannot be insignificant when compared against the invention as a whole and should do more than simply explaining well known concepts. See Id. However, even a small contribution can be enough to satisfy the inventorship requirement as along as the contribution was materially important.

Thus, if the manager is instructing his developers to implement a particular solution proposed by one of his/her developers (while actively rejecting other ideas), he/she can be considered to be maintaining intellectual domination of the invention. However, if the manager has only passively contributed to the general idea of the invention, then that person should not be named as an inventor in a patent application.

What are the consequences of falsely claiming to be an inventor or excluding a rightful inventor?

MPEP Section 2157 states:

Where an application names an incorrect inventorship, the applicant should submit a request to correct inventorship under 37 CFR 1.48. See MPEP § 602.01(c) et seq. In the rare situation where it clear that the application does not name the correct inventorship and the applicant has not filed a request to correct inventorship under 37 CFR 1.48, Office personnel should reject the claims under 35 U.S.C. 101 and 35 U.S.C. 115. See MPEP § 706.03(a), subsection IV.

If however, the company refuses to correct inventorship issues, a protest with the USPTO can be filed explaining the issues of “fraud,” “inequitable conduct,” or “violation of duty of disclosure.” Any allegation of fraud or inequitable conduct, if true, will generally result in invalidation of the company’s patent rights.

Originally published at https://www.clfip.com on October 18, 2019.

Patent & Defamation Attorney https://www.clfip.com