- More than one inventor can be named on a United States patent, and the concept is explicitly recognized in the U.S. Code (35 U.S.C. 116).
- In the case of joint inventors, it is not necessary for the inventors to "physically work together or at the same time," "make the same type or amount of contribution," or "make a contribution to the subject matter of every claim of the patent".
- Multiple individuals often 'brainstorm' together and as a result, come up with an invention together.
- In this situation all individuals would be awarded inventorship and equal rights.
- There is no fiduciary duty between joint inventors. Each joint inventor also may license the patent without approval of the other inventors and without paying them a share of royalties received from the licensee.
- There is no need for a joint inventor to be able to identify a specific component of the invention as their own idea. However, they must be able to say that they contributed to its conception.
- Furthermore, joint inventors need not make a contribution to the subject matter of every claim in the patent.
- As a result, inventorship is determined on a claim-by-claim basis. Thus, if a claim is abandoned during examination of the patent, inventorship is re-assessed.
- Regardless of the amount of individual contribution to the invention, each named inventor on a patent has the right to exclude others from making, using, selling, offering to sell, importing or importing a product made by a process patented in the importing country.
- Moreover, these rights can be exercised by any one of the inventors without the consent of the others (35 U.S.C. 262) or without having to share any income with, or account to, other inventors.
- Joint or co-Inventorship requires communication between the inventors, but it is not necessary for the inventive contributions to be of equal importance.
- The status of co-inventor cannot be granted merely as a reward for hard work or assistance (vs. co-authorship). This means that students, research assistants, technicians and others, even though they may have gathered data or constructed a prototype, are not inventors unless they have made an inventive contribution.
THE INVENTOR IS NOT REQUIRED TO REDUCE THE INVENTION TO PRACTICE
- Difficulties arise in separating members of a team effort, where each member of the team has contributed something, into those members that actually contributed to the conception of the invention, such as the physical structure or operative steps, from those members that merely acted under the direction and supervision of the conceivers.
Fritsch v. Lin:
The inventor “took no part in developing the procedures…for expressing the EPO gene in mammalian host cells and isolating the resulting EPO product.” However, “it is not essential for the inventor to be personally involved in carrying out process steps…where implementation of those steps does not require the exercise of inventive skill.”)
re DeBaun: Tucker v. Naito:
There is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf. Inventors need not “personally construct and test their invention”.
Mattor v.Coolegem: Davis v.Carrier:
One following oral instructions is viewed as merely a technician (contractor) and not a co-inventor. Noninventor’s work was merely that of a skilled practitioner carrying out the details of a plan devised by another.