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Patents Corner
Co-Inventors: Who They Are, and Who They Aren't
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by Becky Mahurin
The following excerpts are taken from "Inside Advice", a feature in the Armstrong Laboratory Technology Business Report, Summer 1997.
It is important to note the distinctions among co-authors of peer-reviewed articles, co-workers or employees, and co-inventors. Sometimes, students or technicians who work closely with an inventor, describe an invention in a paper, or even construct a prototype of the invention are included as co-authors on a publication to recognize their contribution. However, unless they contribute something that results in an invention as claimed, they cannot be considered co-inventors. Under the law, conception and reduction to practice are the two elements of inventorship. Conception, according to Melvin Blecher, Ph.D., attorney and former professor at Georgetown University Medical Center, is the completion of the mental part of the invention. When an inventor has a definite and permanent idea of the invention that would require only ordinary skill to reduce the invention to practice, conception is complete. The key is that the idea must be a specific solution to a problem, not merely a general research goal.
Reduction to practice can be actual or constructive. According to Blecher's description, when an inventor files a patent application that "describes prophetically . . . how to reduce the invention to practice," that application is considered the legal equivalent of actual reduction to practice.
William H. Needle, of Needle & Rosenberg, Atlanta, GA, suggests applying this test to help determine inventorship: ask of a potential co-inventor's contribution, "If this idea had not been contributed, would the claimed invention exist?" If the answer is no, then that person probably is a co-inventor.
Needle divides co-workers into three groups:
- Those who contribute ideas that result in the development of an invention as claimed. Members of this groups should be considered inventors;
- Those who contribute labor, supervision, or routine techniques and other non-mental contributions. Members of this groups should not be considered inventors; and
- Those who contribute ideas while an invention is being developed, but whose ideas don't contribute directly to the claimed invention. This groups also should not be considered as inventors.
". . . A sole inventor must have conceived the ideas in all of the patent's claims; a co inventor must have conceived the idea in at least one of the patent's claims."
If you have questions about inventorship, please call me at 994-7868.
Becky Mahurin
Director of the Technology Transfer Office at MSU
© 2000 Montana State University-Bozeman
Discovery November 1997
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