Inventorship is an extremely important issue in patent law as the failure to correctly identify the inventor(s) can lead to invalidity. The threshold question in determining inventorship is who conceived the invention. Here are some issues to consider:

• Who is an inventor?
  • Focus for the analysis of determining inventorship should be on the claims.  Claims are the “sentences” that define the invention. They may change from the time the patent application is filed until the time the patent issues. Inventorship should be evaluated each time the claims change. Each time the claims change, the question that should be asked is whether the inventor suggested a claimed aspect of the invention.

• • Unless a person contributes to the conception of the claimed invention, he is not an inventor.
  • One who suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not an inventor. Similarly, one who identifies a problem, but does not contribute to the solution, is not an inventor.
  • Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant (except for simultaneous conception and reduction to practice).  Reduction to practice may be either actual or constructive.  Actual reduction to practice is when the invention is actually carried out and is found to work for its intended purpose.  Constructive reduction to practice is when a patent application with a sufficient disclosure is filed.
  • In arriving at conception, the inventor may consider and adopt ideas and materials derived from many sources (e.g. an employee or hired consultant) so long as he maintains intellectual domination or control of the work of making the invention (including the successful testing, selecting, or rejecting of ideas/inventions) even if a suggestion from another source proves to be the key that unlocks the problem. Depending on the circumstances (and the claims), the person making the suggestion may be a co-inventor.
• Who is the inventor for a design patent application?
  • Inventor status for a design patent is based on the claimed ornamental design shown in the figures.
  • Since inventorship is conferred only upon the person(s) who "conceived" the claimed invention, and the claimed invention of a design patent is the ornamental aspect(s) of the device, the inventor of a design patent is the person(s) who "conceived" the ornamental aspect(s) of the device.
  • The person who conceives the design may use the services, ideas, and aid of others to perfect his design without losing his status as an inventor.
  • The person who "perfects" the original design may become an inventor if his new design is not "substantially similar" to the original. The "perfecting" design contributions must be substantial and not merely superficial.
• Listing the correct inventorship is important!
  • Failure to name an inventor can lead to a finding of invalidity.
  • Naming people as inventors who are not inventors can lead to a finding of invalidity.
  • If multiple people are named as inventors in the patent, each inventor named must have made a contribution individually or jointly to the subject matter included in the application. If all the claims are canceled to which an inventor has contributed, the inventor's name must be removed from the patent application.
• Assignments can be used to transfer ownership of the patent rights to a company, another person, or other legal entity.