When a patent application is filed, the inventors named on the application are the original owners of the invention. Of course, these initial ownership rights are often subject to other contractual obligations, such as an employment contract or other assignment document. During patent litigation, a party challenging a patent may attempt to invalidate a patent if inventors are omitted or non-inventors are named. Hence, it’s important to consider who should be named as an inventor when filing an application. However, the decision to name a person as an inventor requires an understanding of inventorship.
In a recent column, I mentioned that my graduate research involved the identification and reactivity of novel ketenes. One of my first tasks was to confirm a synthetic pathway for naphthyl-ketene that had been previously developed by a post-doc student and subsequently characterize the product after reaction of the ketene with a free radical. For this project, I simply followed a reaction pathway provided to me that verified that the reaction worked. Near the end of my degree, I worked to isolate and characterize heptafulvenone, a very reactive ketene, which had never been isolated before. Essentially, I was left to my own devices on this latter project. While to some extent I am taking the opportunity to reminisce about my life in the lab, and to give a shout out to my professor (Dr. Tidwell!), these anecdotes serve as good examples of the difference between authorship and inventorship. Both of these projects resulted in my being named as an author on journal articles. Generally, to be named as an author of an academic paper one needs to make a sufficient contribution to the overall work described. However, such authorship does not automatically translate into being named as an inventor on a corresponding patent. Had either of these projects involved patent applications, I would likely have only been named as an inventor on the latter.
With respect to inventorship, two steps are involved during the development of an invention: the conception of an idea and the reduction of that idea to practice. Conception of an idea refers to the formulation of an invention in the mind of an inventor, such as conceiving of a way to solve an identified problem. Reduction to practice refers to the invention actually being constructed and tested to determine whether the invention performs as contemplated. The touchstone of inventorship generally lies with the conception of the idea so long as the idea can be put into practice with routine skill. Reducing an idea to practice by simply confirming the idea that was expected to work would likely not embody inventorship. Conceiving of the idea of an anti-gravity machine does not embody inventorship if you can’t devise a way to actually construct such a machine. However, constructing an anti-gravity machine likely would.
When I worked to confirm the synthetic pathway for naphthyl-ketene, I was merely verifying an idea that was expected to work, and likely wouldn’t have been named as inventor. In the latter project, I had to develop a method to trap this reactive species. While the initial idea had been conceived by my professor, I had to actively develop the concept myself and then reduce it to practice, which could have amounted to inventorship.
Failing to name the correct inventors when an application is filed is not necessarily a fatal mistake, as errors in inventorship can usually be corrected by adding or removing inventors. However, because named inventors are automatically given rights in a patent, it’s important to name the correct inventors and to keep careful records of research should inventorship ever be challenged.
Mike Fenwick is a patent lawyer with Bereskin and Parr LLP in Toronto and holds a master’s degree in organic chemistry.