The Inventor's Mentor
Can you or Must you Include Friends as Inventors?
An inventor includes in his invention a small feature casually suggested by a drunk friend at a New Year’s Eve party. Should he list his friend as a co-inventor, even though the friend is not an expert in the field of the invention and was inebriated when he made the suggestion?
An inventor includes his wife as an inventor to reward her for all the moral and financial support she gave him during the arduous research. Was this inclusion appropriate?
In the United States the applicant for an invention must be the inventor(s). Each inventor is required to sign a declaration or an oath that he is the inventor of the entire invention.
“I believe the inventor(s) named below to be the original and first inventor(s) of the subject matter which is claimed and for which a patent is sought on the invention entitled.” (form sb05)
Lying on this declaration or oath can result in a fine, a prison sentence, and the invalidation of the patent even if the patent has been awarded:
“I hereby declare that all statements made herein of my own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001 and that such willful false statements may jeopardize the validity of the application or any patent issued thereon” (form sb05).
When several persons contribute to an invention they are co-inventors. Joint inventorship requires a collaborative and focused effort involving communication between the participants during the inventive process. This collaboration includes both “working under common direction” and cumulative efforts, such as one inventor building upon or using another’s work or suggestion. Even though co-inventors must work together, their work does not need to take place at the same location or at the same time. For example a first co-inventor may use results previously obtained by another in a different location. Anyone who has directly contributed to an invention, no matter how small the contribution, may have to be listed as one of the inventors. Does this mean that if friends or colleagues make suggestions, they must automatically be included as inventors? Not necessarily. As long as the inventor maintains “intellectual domination over making the invention, ideas, suggestions and materials may be adopted from others” (MPEP 2137.01) and there is no joint inventorship.
While collaboration is a necessary requirement for co-inventorship, the contribution of each co-inventor must be significant beyond the point that “only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.” The contribution of well-known facts is not sufficient to make someone a co-inventor: it must be more than explaining the state of the prior art or providing rote experimental services. In addition, each co-inventor’s contribution must not be too far-removed from real-world realization: each invention must be described in sufficient detail to enable someone of ordinary skill in the art to build it. Accepting suggestions from friends can be tricky but the inventor can retain sole inventorship as long as he maintains “intellectual domination” essentially defined by the Supreme Court in O’Reilly v. Morse. In awarding patents on the telegraph to Samuel Morse, the Court considered the impact of Morse’s consultations with other scientists prior to the making of his invention. The Court stated:
“Neither can the inquiries he made, or the information or advice he received, from men of science in the course of his research, impair his right to the character of an inventor. No invention can possibly be made, consisting of a combination of different elements of power, without a thorough knowledge of the properties of each of them, and the mode in which they operate on each other.”
Interpretation of the law is tricky and sometimes the line between retaining full inventorship and having to share it with a co-inventor is so fine as to be almost invisible. In asking for suggestions be careful not to lose your intellectual domination. Should the inebriated friend or the wife be included as co-inventors? It depends on the following questions:
1) Can their suggestion be expressed as a structural or methodological difference with the prior art?
2) Does this difference lead to greater utility such as efficiency, cost, size, etc?
If both answers are yes, then they should be co-inventors.
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©2014 by George Levy