Avoiding inventorship conflicts

“Who is an inventor?” is often a tricky question and can be a source of contention when several people work on a particular project that becomes the subject of an invention disclosure, and eventually the subject of a patent application. It is often erroneously assumed that if one contributes in any way to a project, one must be an inventor.  But, whether a contributor to a project is an inventor or not depends on the contribution made and what can be claimed as novel and non-obvious in view of prior art.

Consider Sam and Jane, for example. Sam is a lab technician. Jane is a scientist. In one scenario, Sam contributed to Jane’s project by merely following a plan devised by Jane. Sam does not invent or devise anything new in following this plan. In this first scenario, Sam is not an inventor. 

In a second scenario, Sam, while following the plan devised by Jane, encounters a problem with the plan and invents a solution to the problem.   As far as Sam knows, Jane wasn’t aware of this problem with her plan before he discovered the problem. Jane also didn’t have a solution to the problem, but Sam did. In this second scenario, Sam may be an inventor.  

When a patent application is derived from the project, the ultimate test of whether Sam is listed as an inventor would be whether the patent application includes claims drawn to the solution Sam invented.

For any research, it is a good idea to keep a careful written record of all who contribute to the research and each person’s contribution. This record should be part of the research reports and any invention disclosure(s) resulting from the research. The record can be consulted if inventorship problems arise during procurement of a patent.