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Patents Corner
Inventorship
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by Becky Mahurin
The first question on most invention disclosure forms asks for the identification of all inventors. This may seem an easy question, but often is not. U.S. patent law is very specific about who may be awarded a patent. Clearly, by law only the true and original inventor(s) may be awarded patents A patent can be invalidated if all true inventors are not recognized or if persons who do not meet the definition of inventors are designated as inventors. The definition of an inventor employed by the patent office is that person or persons who have contributed to the conception of the invention.
The core of a patent is the claim or claims. Claims define the scope of the patent and describe very clearly and specifically the new invention. To be an inventor, one must have conceived the idea described in at least one claim. To be sole inventor one must have conceived the ideas encompassed in all claims.
The gray area begins when the "inventor" assigns another person to draft designs or to reduce to practice his or her ideas. Does the person who makes the first working prototype of the invention meet the requirements of being named an inventor? No, unless in the process of drafting or fabricating the prototype this technician contributes something new and heretofore unthought of.
Another area that may be troublesome is that of authorship. Authorship on a publication first detailing the invention does not necessarily convey inventorship. Often technicians and students will be named as authors on papers. Once again, if these technicians have not contributed to the concept they are not considered inventors.
If a student, technician or research assistant has spent many hours working with you on your invention but are not, by law, true inventors, there are more appropriate ways to reward those people. You may name them as coauthors on a paper or recognize their contributions through citation in a paper. Also, you may designate that person to receive a share of the income that is derived from that invention.
Becky Mahurin
Director of the Technology Transfer Office at MSU
© 2000 Montana State University-Bozeman
Discovery February 1996
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