Chapter §8.03 Joint Inventors
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§8.03 Joint Inventors
Inventions are often the work of more than one individual. When two or more persons qualify as inventors of an invention, they are deemed "joint inventors."54
[A] Statutory Basis
Section 116 of the Patent Act provides that when "an invention is made by two or more persons jointly, they shall apply for patent jointly and each made the required oath, except as otherwise provided [in Title 35]."55 Moreover, "[i]nventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent."
[B] Who Qualifies as a Joint Inventor?
The statute does not clarify when one qualifies as a joint inventor. Case law addresses this issue.
[1] Conception as the Touchstone
Being an inventor requires that an individual contributed to the conception of an invention. "Conception is the touchstone of inventorship, the completion of the mental part of invention."56 "Determining 'inventorship' is nothing more than determining who conceived the subject matter at issue, whether that subject matter is recited in a claim in an application or in a count in an interference."57
Current law applies a one-claim rule. That is, when an individual seeks to be added as a named inventor on a patent, he must show that he contributed to the conception of the subject matter recited in at least one claim of the patent.58 Contributing to the conception of the subject matter recited in a single claim, although the patent may contain many claims, is sufficient to qualify the contributor as a co-inventor.59
Contrariwise, contributing to the reduction to practice of an invention, after it has been conceived, is not enough to qualify the contributor as a co-inventor. "When one party conceives an invention and then asks a second party to reduce it to practice, the second party is not normally an inventor, or co-inventor, unless the second party has made significant changes in the original proposal necessary to carry out the conception."60
[2] Quality of the Contribution
[a] "Not Insignificant in Quality"
Copyright law requires that joint authors each make a contribution to a work of authorship that would independently qualify for copyright protection.61 Patent law does not follow this relatively bright line rule; the standards it does apply to determine whether an individual's contribution is sufficient to qualify him as a joint inventor are far less clear. The Court of Claims (one of the Federal Circuit's predecessors) has aptly observed that
[t]he exact parameters of what constitutes joint inventorship are quite difficult to define. It is one of the muddiest concepts in the muddy metaphysics of the patent law. On the one hand, it is reasonably clear that a person who has merely followed instructions of another in performing experiments is not a co-inventor of the object to which those experiments are directed. To claim inventorship is to claim at least some role in the final conception of that which is sought to be patented. Perhaps one need not be able to point to a specific component as one's sole idea, but one must be able to say that without his contribution to the final conception, it would have been less—less efficient, less simple, less economical, less something of benefit. 62
Federal Circuit law provides that "[b]eyond conception, a purported inventor must show that he made 'a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and [did] more than merely explain to the real inventors well-known concepts and/or the current state of the art.' "63 In other words, "[a] joint inventor 'must contribute in some significant manner to the conception or reduction to practice of the invention [and] make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.' "64
One is not precluded from being a joint inventor merely because his contribution to the invention involved experimental testing. Rather, "the qualitative contribution of each collaborator is the key—each inventor must contribute to the joint arrival at a definite and permanent idea of the invention as it will be used in practice."65
However, each co-inventor need not have his own independent conception of the complete invention as claimed. That is, he does not have to conceive the entire invention by himself. Rather, "a group of co-inventors must collaborate and work together to collectively have a definite and permanent idea of the complete invention."66
Determining when a contributor's efforts rise to the level of coinventorship via contribution to the conception of an invention can be a difficult and fact-specific endeavor. The Federal Circuit has identified several scenarios that do not reach the level of co-inventorship:
Contributions to realizing an invention may not amount to a contribution to conception if they merely explain what was "then state of the art," Hess [v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 981 (Fed. Cir. 1997)], if they are too far removed from the real-world realization of an invention, see, e.g., Garrett Corp. [v. United States, 422 F.2d 874, 881 (Ct. Cl. 1970)] ("One who merely suggests an idea of a result to be accomplished, rather than means of accomplishing it, is not a joint inventor."), or if they are focused solely on such realization, see, e.g., Ethicon [v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998)] ("[O]ne does not qualify as a joint inventor by merely assisting the actual inventor after conception of the claimed invention."). 67
[b] Contribution of an "Essential Element"
One who contributes to the conception of an "essential element" of a claimed invention qualifies as a joint inventor. The Federal Circuit's May 2018 decision in In re VerHoef provides a good illustration.68 There the Circuit affirmed a "rare" (or at least uncommon) USPTO ex parte prosecution rejection under 35 U.S.C. §102(f) of all VerHoef's pending application claims. Although the VerHoef's application listed VerHoef as the sole inventor, he was indisputably a co-inventor with another. Thus under §102(f) (pre-AIA version), VerHoef "did not himself invent the subject matter sought to be patented." The inventive entity was VerHoef plus another. Even though VerHoef was a joint inventor (though not the sole inventor), §102(f) requires USPTO examiners to reject applications when the facts show the named inventorship is improper.69
The invention was made after VerHoef's dog had difficulty walking following surgery. Working with his veterinarian, Dr. Lamb, to rehabilitate the dog, VerHoef designed a supportive harness to aid its mobility. The specific problem they confronted was how to help the dog stop dragging its hind paw and putting weight on the paw's knuckles, known as "knuckling." VerHoef recognized that the harness would work better if connected to the dog's toes. According to VerHoef's own affidavit submitted to the USPTO, his veterinarian "Dr. Lamb suggested that a strap configured in a figure '8' that fit around the toes and wrapped around the lower part of the leg, above the paw, might be something to consider." VerHoef thereafter implemented the figure-eight configuration in a working harness.
In 2011, VerHoef filed a patent application directed to the harness; he named only himself as the inventor and did not list Dr. Lamb as a co-inventor. As characterized by the PTO and the Circuit, the figure-eight loop was an "essential element" of the invention, recited in independent application claim 1, which read:
1. A dog mobility device for assisting with a forward movement of a hind leg of a dog and with an upward movement of the dog's toes, the dog mobility device comprising:
at least one elastic cord connectable to a dog harness, wherein the at least one elastic cord includes an upper forward end portion and a lower rearward end portion; and
a paw loop connectable to the lower rearward end portion of the elastic cord, wherein the paw loop is configured to engage one of the dog's paws, and wherein the paw loop is defined by a material strip looped into a figure eight configuration, and wherein the material strip figure eight configuration further defines a metatarsal strap section and a toe strap section, and wherein the metatarsal strap section is configured to receive and fit about the dog's metatarsus, and wherein the toe strap section is configured to receive and fit about the dog's two innermost toes. 70
Notably, VerHoef relied on the figure-eight configuration to distinguish prior art cited against his application in prosecution.71
During prosecution the USPTO examiner requested information on the conception of the invention. Critically, VerHoef responded by supplying an affidavit in which he stated the following:
I said to Dr. Lamb, "There has to be a way to connect the cord to the toes." At the end of our appointment, Dr. Lamb suggested that a strap configured in a figure '8' that fit around the toes and wrapped around the lower part of the leg, above the paw, might be something to consider. In response, I said that I would try to figure out a way to make that work." 72
Based on the affidavit, the examiner rejected all claims under 35 U.S.C. §102(f) (pre-AIA) and the Board affirmed.
On appeal, the Federal Circuit affirmed the Board. The appellate court agreed with the USPTO that the figure-eight element was an "essential" one. Although VerHoef recognized the problem, Dr. Lamb provided the solution by suggesting the figure-eight element. This was a contribution to the conception of the invention that was "not insignificant in quality." Nor was it merely an explanation of a well-known concept or a summary of the prior art.73 Hence, Dr...
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