At first blush, identifying an inventor should be a pretty easy task. Clearly it is someone who invents – the innovator of something new, useful and non-obvious. But what if two people collaborate on an invention? Are both “inventors?”Although seemingly simple in the abstract, the identification of inventors is often very complicated. Key to the analysis of inventorship is taking a careful look at the actual invention being claimed.
For example, let us imagine that you succeed, where all others before you have failed, in inventing a perpetual motion machine. You are able to uniquely arrange the elements of the machine so that, if properly constructed, perpetual motion will occur. One important piece of your invention is a frictionless bearing, for which you have not yet conceived of an implementation. Without this novel bearing, the motion of your machine will not be perpetual. You discuss your motion machine with an associate, Billy, who is immediately able to sketch a novel solution for the frictionless bearing for you. Neither of you being able machinists, you then approach Candy, who is able to build the bearing using blueprints supplied by Billy. With this bearing, you are then able to construct a working prototype. Before announcing your Nobel Prize-worthy achievement, you seek to file a patent application on your new machine.
Who are the inventors of this perpetual motion machine? If the machine itself is the subject of the patent, then you certainly are an inventor since you conceived of the machine and identified the parts needed to make it work. Billy is also arguably an inventor, since without his bearing contribution the functional operation of the machine would not be possible. Indeed, Billy may be entitled to a separate patent on his invention of the valuable, frictionless bearing. Candy, however, is probably not an inventor of this perpetual motion machine, since she did not contribute to the conception of the invention, but merely followed the instructions of Billy’s blueprints in machining the bearing. Although unquestionably valuable, Candy’s contribution did not elevate her to the level of “inventor.”
When filing a patent application, it is essential that all true inventors be named in the application. Purposely leaving a true inventor out of a patent application, or purposely adding the name of a noninventor, may give rise to later invalidation of the issued patent. As a matter of practice, it is preferable to err on the side of being over-inclusive in naming inventors. Individuals whose names are erroneously added to a patent application seldom complain, while inventors whose names are left off a patent application are much more likely to seek redress and challenge the patent’s validity. Avoid, however, gratuitously naming friends, relatives and superiors in your patent application, as inventorship will likely be challenged in the event that the patent is later litigated.