In a new article for the Dallas Business Journal, patent attorney Scott Yackey addresses the need for greater clarification on who qualifies as an inventor and the risks associated with failing to name all eligible inventors on a patent application.
The article, titled “Why listing all inventors is crucial to protecting an invention,” explains that, under United States patent law, an inventor is a person who “contributes to the conception of an invention as it is claimed.” “Conception” is the formation in the mind of the inventor of a definite and permanent idea of the operative invention as it is thereafter to be applied in practice. The “claims,” on the other hand, define the subject matter of the patent, which Yackey likens to the “metes and bounds description of real property” in that they act as the legal boundaries of the patent’s rights.
United States patent law requires patent applications to include the names of all of the inventors. Mistakes or omissions in listing out the names of all inventors can result in an unenforceable or invalid patent. Ownership of the issued patent may also be altered. Inventorship issues are frequently raised during litigation, making it imperative to fix any problems as soon as possible.
While the process for determining who qualifies as an inventor of a new technology developed as the result of a large, collaborative effort is notoriously muddy, Yackey says that “identifying all the joint inventors remains critical to protecting the invention.” Keep in mind that research assistants are likely not inventors, and not everyone needs to contribute the same amount or type of work to be called an inventor. Other clarifications can be found in the longer article.
“If mistakes in the identification of inventors are found,” Yackey adds, “patent counsel should be consulted as soon as possible to correct the identification and to prevent complications.”