How to Decide Who Should be Named as an Inventor on a Patent Application?
Wherever you are in the world, a patent applicant is required to list the names of each person who made an inventive contribution to what is claimed in the patent application. So, to be named as an inventor on a patent application, you must be able to find your inventive contribution in at least one claim of that patent application. In other words, when the patent application is ready to be filed, even if your inventive contributions are spread all over the patent specification, if you review the claims of that patent application and cannot find your inventive contribution in at least one claim (either an independent claim or a dependent claim), you cannot be named as an inventor…because you are not an inventor with respect to that patent application as it is filed. When the patent application becomes a granted patent, only actual inventors can be named as inventors on the face of that patent. Just the same, no actual inventors can be left off of the face of that patent. This means that not only are you compelled to list only actual inventors in your patent application, but you must list all the actual inventors. Naming all the actual inventors is important, because if non-inventors are named as inventors, or if inventors are not named as inventors, in some cases, your patent could be invalidated. Yes, all that time and money and potential…wasted! With this in mind, you can appreciate why it’s important to provide IP counsel with the names of all the inventors. But, at the invention disclosure phase, before the patent experts have analyzed your invention against the backdrop of the relevant prior art, you really have no way of knowing what will ultimately be claimed in that patent application. And, even if you did know, even if you somehow you knew exactly what was going to be claimed, matters of inventorship can be complicated enough to require a legal analysis before a final inventorship determination can be made. So, in preparing your invention disclosure, how do you know who to list as inventors? Well, unless you’re the lone inventor, you really can’t be certain. For this reason, the best approach is either to contact IP counsel to discuss, or simply make a list of every person who you think made an inventive contribution, then list the contributions of each to the best of your knowledge. Doing this will provide IP counsel with all the information he or she needs to make the final decision on inventorship.