The issue of inventorship is often raised during patent litigation.  If the inventors are incorrectly stated, the patent being asserted is unenforceable. For this reason, a critical component of developing a valuable patent portfolio is to have a process for making sure that inventorship is correctly stated. Because claims change during the patent application process, inventorship is sometimes a moving target.  Thus the best practice for nailing down proper inventorship is to examine the issue every time a change is made to the claims.

So who is an inventor? The inventor is the person who conceived of the idea that is claimed. Conception – not creation, is the cornerstone of inventorship. A person who merely implements an idea or supervises the implementation of it is not an inventor unless they contribute an enabling detail or improvement that ends up in the claims of the patent. A person who is hired to implement an idea is not an inventor by default. Moreover, the person in charge of the project is not automatically an inventor.  In many cases, excluding a person’s boss,  particularly when he or she was not involved in conception of the core innovation, is the correct move.  Inventorship can get complicated when a person has an original idea, but lacks the expertise to enable the idea, thereby necessitating the need to hire someone to build the idea. In such cases, the person who was hired often contributes significantly towards enabling the idea and may provide additional concepts, making that person a co-inventor.  

The bottom line with inventorship is that there are many nuances to consider and seeking the advice of a competent patent attorney is the best practice for making sure inventorship is correctly stated. Getting inventorship right is a critical to making a patent enforceable and having a process for making sure inventorship is right is a critical part of any intelligently executed intellectual property strategy.

Are you thinking about patenting your invention?   Whoever invents, discovers or improves a process, machine, manufacture or composition may be eligible for a patent.  When you are ready to discuss your idea with a patent lawyer, you will save time and money if you are prepared.  We are providing the Invention Disclosure Form below for informational purposes.  The form will help you flesh out your idea and collect relevant information that your IP lawyer will need to best service you.  If you are in the Los Angeles area, please consider us to help you obtain and protect your intellectual property rights.

Click here to download an Invention Disclosure Form.

As a patent holder, you have the right to prevent sale, use, or manufacture of a discovery or invention if it employs substantially the same means to achieve substantially the same results in substantially the same way as the limitations recited in your claims.  This is a right you may assert under the “doctrine of equivalents.”   The scope of a patent is not limited to the literal terms, but instead embraces all equivalents to claims described.  See Festo v. Shoketsu, 535 U.S. 722 (2002).

Amendment of your claims during patent prosecution may bar a claim for infringement under the doctrine of equivalents.  Prosecution history estoppel occurs when the claims are amended to avoid prior art or to satisfy requirements of the Patent Act during prosecution of the application.  In other words, if your claims are narrowed to overcome prior art cited by the Examiner, the scope of your patent may be restricted to the exact or literal wording of the amended claims instead of any equivalents.  

Amendment of your claims does not always preclude you from a claim for infringement under the doctrine of equivalents.  The patent holder has the burden of proving that the amendment does not relinquish the equivalent being imposed.  So, when reviewing the draft Office Action Response prepared by your patent lawyer, make sure the scope of the claims adequately cover the invention.   Discuss all claim amendments with your patent lawyer to make sure you are both clear on what coverage is needed and retained throughout the patent prosecution.