Naming a person who is not a proper inventor on your non-provisional patent application can be a costly, time-consuming error to fix, and if not fixed ultimately results in an invalid patent.[1] Typically, time and money are two things that are in short supply for an independent inventor, or a small business. You may have an investor, a business associate, a friend, or a relative that you want to list as an inventor on your patent application for any number of reasons, but there are legal requirements for a person to be considered an inventor, or joint inventor on a patent application.

To be an inventor a person must contribute to the invention’s conception.[2] Additionally, a joint inventor is a person who shares in the conception of the claimed invention.[3] Determination of the right lineup of inventors can be difficult, and governing standards can be opaque. However, one touchstone is that a person who walks into a room of co-inventors to lecture them on the current state of the art in front of a whiteboard and then leaves, would not (without more) qualify as a joint inventor to the novel development the rest of the group devised using that knowledge. Absent fulfillment of the above considerations, your investor, business associate, etc., are not inventors and should not be listed as such on your patent application.

If you have listed a person as an inventor improperly, the United States Patent and Trademark Office (U.S.P.T.O.) provides at least two mechanisms by which your error can be corrected. As an initial matter, the U.S.P.T.O. presumes inventorship is correct, as filed.[4] But if you find yourself in a situation where you have named an improper inventor, without deceptive intent you can submit a request to correct inventorship under 37 C.F.R. 1.48.[5] Procedurally, correction of inventorship of a non-provisional application under 37 C.F.R. 1.48 must include (1) an application data sheet identifying each inventor by his/her legal name, and (2) a processing fee.[6] Notably, the application data sheet must identify the information being changed with underlining for insertions and strike-through or brackets for text removed.[7]

Additionally, inventorship can be corrected by filing a continuing application under 37 C.F.R. 1.53.[8] However, there may be no good reason to proceed down this path, as the MPEP explicitly states “although it should be noted that the requirements for a request under 37 CFR 1.48 filed on or after September 16, 2012 are minimal.”[9] In addition, costs associated with the preparation of a continuing application are sure to be higher than costs associated with the preparation of a request to correct inventorship under 37 C.F.R. 1.48. To avail yourself of this option, the new continuing application must be co-pending with the previous application and there must be inventorship overlap.[10] Co-pendency is defined in the clause which requires that the later-filed application must be filed before (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.[11] Furthermore, overlap can be accomplished when at least one inventor in the continuing application includes an inventor in the previous application.[12] These two mechanisms are just two options for correcting inventorship, but it can be easily gleaned from the above processes that additional time and money are required to correct any errors in inventorship.

In either case, utilized for correcting inventorship, it should be noted that any additional inventors will need to agree to and submit the form declaration, including acknowledging they are subject to the duty of disclosure of known material prior art. This may require a searching review of the new inventor’s knowledge at a late date during prosecution, and resulting disclosure of additional prior art for consideration by the examiner.

Severe consequences can ensue if inventorship is not corrected. First and foremost, courts have recognized that “[a] patent is invalid if more or fewer than the true inventors are named.”[13] Having your patent invalidated means you no longer have the rights and abilities associated with a valid patent. You can no longer exclude others from practicing your invention, which would then be dedicated to the public with no ability to recapture. However, an oft-overlooked yet equally important aspect is the implication of ownership by an inventor or co-inventors. According to 35 U.S.C. 262:

In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.[14]

The implications of 35 U.S.C. 262 can effectively allow an improperly named inventor to be enriched by making, selling, using, or licensing the invention without the knowledge or consent of the proper inventor. Additionally, the legal options for correcting this oversight could result in large expenditures of time and money, and/or ultimately may lead back to the patent being invalidated. Finally, note that all is not lost if, innocently, a patent issues with the wrong inventors named. A patent is valid if the error is corrected, either through post-issuance USPTO procedures or through actions of a federal judge after notice and hearing among concerned parties. 35 U.S.C. § 256. It is always better to attempt accuracy at the beginning of the patenting process, rather than rely on late-game safety nets.

The key takeaway here is that inventorship is a legal consideration, not an emotional, financial, or altruistic consideration, and should be treated accordingly because the consequences can be severe.

[1] Ajinomoto Co., Inc. v. Archer-Daniels-Midland Co., 228 F.3d 1338 (Fed. Cir. 2000).

[2] Mueller Brass Co. v. Reading Indus., 352 F. Supp 1357(E.D. Pa 1972).

[3] In re VerHoef, 888 F.3d 1362, 1366-67, 126 F.2d 1561, 1564-65 (Fed. Cir. 2018).

[4] MPEP § 2157

[5] Id.

[6] 37 C.F.R. § 1.48

[7] 37 C.F.R. § 1.76.

[8] MPEP § 602.01(c)(III).

[9] Id.

[10] MPEP § 601.01(III).

[11] MPEP § 211.01(b).

[12] MPEP § 602.01(c)

[13] Ajinomoto, at 1381.

[14] 35 U.S.C. § 262.

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