Are You an Inventor?

 

Determining inventorship is an important step of the patent application process. Are you an inventor? Is your co-worker an inventor? Is your supervisor an inventor? Under United States patent law, an inventor is an individual, or for a joint invention, the individuals collectively who invented or discovered the subject matter of an invention. However, what does it mean to invent or discover the subject matter of the invention?

An invention generally involves a mental act and a physical act. That is, the mental act, i.e., conceiving of the subject matter of the invention, and the physical act, i.e., reducing the subject matter of the invention to practice, are both portions of the inventive process. The mental act may be defined as formulating the subject matter of the invention in the mind of the inventor. In contrast, the physical act may be defined as producing a physical rendering of the subject matter of the invention.

To be named as an inventor under United States patent law, an individual must have completed the mental act. That is, an inventor must have conceived of the subject matter of at least one of the claims of the patent application. Therefore, inventorship depends on the claims of the patent application and is determined when the patent application is complete. It is not necessary that the individual conceived of the subject matter of all of the claims of the patent application, but it is necessary that the individual conceived of the subject matter of at least one of the claims.

Therefore, as non-limiting examples, merely being the supervisor of an inventor, merely building a prototype or simulation of the invention, merely following the instructions of an inventor, or merely discussing the invention may not be enough to qualify an individual as an inventor. However, an individual may be an inventor if the individual formed in his or her mind a definite and permanent idea of the complete and operative invention that is described in at least one of the claims of a patent application.

Do you have questions regarding inventorship? Feel free to give us a call.

©2016 Quinn Law Group, PLLC. 

Share this...
Share on LinkedIn
Linkedin