Authorship v. Inventorship: The Difference Between Journal Authors and Patent Inventors

Authorship v. Inventorship: The Difference Between Journal Authors and Patent Inventors

Mar 25, 2013

Being an author on a peer reviewed article or an inventor on a patent are highly respected achievements. However, to some, the concept that you are not automatically an inventor on a patent even though you are an author of a paper on the same subject matter is a profound concept.

Generally speaking, to be an author of an article, a person can have performed the underlying research, supervised the research, or written the paper, among other criteria. This is much less stringent than the requirement to be an inventor, because inventorship has a legal definition.

To understand patent law inventorship, one must understand two of the primary underlying concepts in patent law: conception and reduction to practice. Conception is a definite and permanent idea formed in the mind of a person of an operative invention or, in other words, the underlying mental perception of the invention to be patented. Reduction to practice is what it sounds like; it is taking the conceptualized idea and reducing it to a tangible form. To be an inventor on a patent, patent law requires the person to contribute in the conception of the invention, not merely take part in the reduction of the invention to practice. Therefore, if a person does not partake in the mental formation of the invention, that person cannot be listed as an inventor on a patent. Correspondingly, if a person only executes on the protocol or steps laid out by another to reduce the invention to practice, that person cannot be listed as an inventor.

Piled on top of the limitations aforementioned, patent law also has the requirement that, to be an inventor, one must have conceived of the subject matter contained in at least one claim within the patent. Thus, there is no guarantee that the inventors listed on an innovation disclosure filed with our office or even the original patent application will be the same people listed as inventors by the end of the prosecution process. During prosecution, as the patent attorney, agent, or pro se applicant respond back and forth with the United States Patent and Trademark Office, claims can be amended, deleted, or in some situations added. As this process progresses, the inventors listed on the patent have the potential to change because if a person conceives of the matter contained in a claim that is deleted, that person is no longer an inventor. The opposite is true if a claim is added. If a person was not originally listed as an inventor and a claim is added that contains matter that person conceived of, he or she will be added as an inventor.

Accordingly, naming someone as an inventor on a patent application that does not meet the legal definition mentioned above can have devastating consequences. There are occasions when it might seem easiest to list a person as an inventor merely to avoid offending him or her. While this may seem to benefit relationships amongst everyone involved, this is not allowed by the USPTO and such an improper listing of inventors on a patent can be grounds for invalidation of the entire patent. This leads to the loss of invaluable rights and makes it much more difficult to exploit the underlying intellectual property. Therefore, it is everyone’s responsibility, although it may make some unhappy, to conform to the rules of inventorship. Otherwise, all of the time and effort expended by all involved to perfect the invention might be discounted.

If you have any questions, comments, or concerns regarding anything mentioned above, please feel free to contact Christopher Baxter at christopher.baxter@unh.edu.

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