Determination of Inventorship on a Patent Application

UB faculty and staff are obligated to assign intellectual property under the SUNY Patents and Inventions Policy. Intellectual property includes potentially patentable inventions, tangible research materials, computer software and any unique or novel innovation in the technical arts or any new and useful improvements thereof that is created in the course of your employment. A new technology disclosure (NTD) is the first step in fulfilling that obligation, which is the submission of a summary of the intellectual property to the Technology Transfer Office (TTO).  

The most frequent question posed upon NTD submission is: Who should be listed as an inventor? Determination of inventorship is not a subjective assessment made by the person submitting the NTD. Rather, inventorship is a legal definition provided by the United States Patent and Trademark Office (USPTO) and is not subject to interpretation.

To be correctly listed as an inventor on a patent a person must:

1. Have contributed to conception of at least one element of one of the (claimed) inventions; AND
2. Have a claim of the allowed patent or patent application directed toward said element(s).

Assignment of correct inventorship is critical to a patent application. Substantiation of inventorship can be challenged, and documentation could be necessary to prove inventorship. Given the legal definition of inventorship, an error in inventive assignment can be grounds for loss of a patent claim or rejection of a patent application in its entirety.

A common struggle is differentiating between inventorship and authorship. Inventorship is a legal determination made by qualified practitioners, and consultation should be sought for any discrepancies or explanations around assignment. Determining inventorship is not subjective and must be made based on the USPTO criteria. The criteria for authorship are typically based on contribution to published content, not on generation of an idea. Inventorship does not reflect the quality, value, or level of each inventor’s contribution. It is simply a question of fact.  Incorrect inventorship can have dire consequences. Failing to name an individual that should be an inventor or identifying an inventor who does not meet the qualifications both can result in invalidation of an allowed patent if inventorship is ever challenged.

The United States Patent and Trademark Office (USPTO) has a legally binding definition of inventorship in Section 2109 that must be applied to all considerations of inventorship assignment. The official summary of inventorship is given as follows:

The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor. … Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant... One must contribute to the conception to be an inventor. (USPTO) 

The specific point of interest is that an inventor is NOT required to have contributed to the inventive concept’s reduction to practice, or the manifestation of an inventive idea from a thought to a reality. The reality could be the synthesis of a molecule, the generation of an algorithm, or the building of an instrument. The concept would be the associated idea and design for the complete and operative invention for the molecular structure or its synthesis, the flow chart used to write an algorithm, or the blueprint for the instrument. 

To illustrate the complications of determining inventorship, consider the following scenarios:

• An academic research lab develops a novel molecule with antibacterial properties. The primary investigator designed the synthesis pathway, and the students performed the synthesis steps, all of which incorporated standard chemical reactions. If a patent application is filed, the primary investigator is an inventor for developing the concept and the pathway to reducing the concept to practice. However, the students performed standard experiments using known techniques, so they did not provide inventive contribution and would thus not be listed as inventors on the patent application.
• An engineer designs a novel system for reducing gas consumption in a vehicle and presents it to the development team. The team suggests ways that the system can be incorporated into an existing vehicle model. The resulting patent application would list the engineer as an inventor, but the design team did not contribute to the invention itself and would not be listed.
• A biology lab is culturing bacteria for routine toxicity experiments when a massive snowstorm causes power outages overnight, causing the incubators to drop in temperature. The extended growth at low temperature altered the bacterial cultures significantly. An inquisitive worker isolated some of the cultures and identified a new species growing under the non-standard incubation conditions. The worker independently, though accidentally, modified a variable in a non-standard way that enabled the discovery of the new species, which is a patentable invention for the worker.  The protocols for the standard culture practices are not inventive, so anyone involved in the initial steps of the bacterial cultures, prior to the power loss, would not be listed as inventors. 

Another caveat of inventorship is the designation of claims with the patent application. Patent claims comprise the legally enforceable statements within a patent application that provide specific details on the scope of protections granted exclusively to the patent holder. As inventorship is ascribed to contribution to a specific aspect of the invention, an inventor can contribute to a single claim or multiple claims. Claims are not always evident at the time of invention or disclosure, and claims can evolve through the patent prosecution process. The claim set submitted in the initial application may not be preserved intact to the issued patent, as the review process frequently results in claim set alterations.

As a result of claim set changes, inventorship is fluid until a patent issues. Since inventorship is based on contributions to one or more claims, as those claims are prosecuted with a patent authority, inventorship is subject to change. If an inventor is assigned for contributions to a single claim, and that claim is subsequently disallowed by the patent office, then that individual inventor would no longer be named on the patent. For example, a patent application for a therapeutic compound could contain claims for treatments of breast and lung cancer. However, the patent office deemed the data supporting the lung cancer claim was insufficient to substantiate a therapeutic effect, so the lung cancer claim was not allowed. As such, any inventors who worked only on the lung cancer application would no longer be inventors on the final allowed patent. Determining who should or should not be named as an inventor should be revisited each time there are changes to the claims: when first written, at each point in prosecution when such claims are withdrawn, canceled or modified, and if/when claims issue. Because the final inventor list  is not determined until after a patent application has been filed and prosecuted, it is best practice to list all contributors to an invention on any NTD submission.

If you have any questions about inventorship or any aspect of intellectual property, please do not hesitate to reach out to the TTO Commercialization Team (techtransfer@buffalo.edu).