What Is Inventorship?
Inventors are listed on a patent application when it is pending as well as on the issued patent.
Who is defined as an inventor?
By law, an inventor named on a patent application or issued patent must contribute to the conception of the idea or subject matter of at least one claim that is filed with a patent application. If there are several claims, an inventor need only contribute to one of those claims to be named.
Note that inventorship focuses on the invention that is claimed, not on all subject matter described in the patent application. Keep in mind that if invention claims that are specific to "Inventor A" are ultimately not allowed, "Inventor A" would no longer be considered an inventor on the patent.
Therefore, regardless of how brilliant or helpful someone’s related idea may be, if that idea or contribution is not directed to the invention as it is being claimed in the patent application, that person is not an inventor.
Who would not qualify as inventors?
Some examples of individuals who would not qualify as inventors under U.S. patent law include the following:
- Someone whose only contribution is to use "ordinary skill" in a field or technical area to create or reduce something to practice
- A technician who carries out experiments according to routine protocols or merely assembles the invention
- A supervisor or department manager of a named inventor
- Someone whose only contribution to the invention is something that would be ‘obvious’ to those skilled in that field of the invention
- A person who identifies data or information to be obtained in support of the invention but does not contribute to the inventive idea itself
- A person who merely discovers a problem (unless, perhaps, that individual contributes to the solution)
Determining inventorship on projects with multiple contributors
When a project has multiple contributors, inventorship can be unclear. INVO, in conjunction with outside patent counsel engaged in prosecuting the application and Northwestern’s Office of General Counsel, can help determine who should be listed on a patent application as an inventor. Outside patent counsel will ask all project contributors to describe their personal contributions to the claimed invention. These contributions must be supported by objective evidence. Often, outside patent counsel will conduct interviews with contributors to the project, examine notebook pages, or examine other tangible evidence that helps demonstrate an individual’s contribution to the invention.
Patent applications must include all contributing inventors. If a patent's inventorship is incorrect, an issued patent can be challenged by an outside party and ultimately invalidated by a court. If contributors are left off, those inventors, and their schools and departments will not receive their proper distribution of any licensing revenue that comes to the University.