Editor’s note: Murray Spruill is a partner with Alston & Bird LLP and is the chair of the firms Biotechnology and Pharmaceutical Patent Group. This column is the latest in the Entrepreneurial Spirit series done in partnership with the Council for Entrepreneurial Development and Local Tech Wire.
_______________________________________________________________________________________A patent application must properly identify the single inventive entity (a sole inventor or two or more joint inventors) that is responsible for the subject matter of all of the claims. While an easy concept to state, it often proves difficult to put into action. As described in the case law, an inventorship determination is “one of the muddiest concepts in the muddy metaphysics of the patent law.”

To complicate matters, many in the academic setting confuse the concept of authorship and inventorship. In determining authorship on a scientific publication many factors are taken into consideration. One may be awarded inclusion as an author on a scientific publication based on intellectual input, the performance of actual laboratory work, the sharing of materials used in the experiments, being a graduate student working on an aspect of the work, being the laboratory head, and other considerations. These types of considerations can be irrelevant for an inventorship determination.

The threshold question in determining inventorship is who conceived the invention. The invention is considered the subject matter of the claims of the application. Unless a person contributes to the conception of an invention as encompassed in the claims, he/she is not an inventor.

Under the United States Standards for Inventorship, the inventive act comprises two separate phases: conception and reduction to practice. The accepted definition of conception was set forth in an early case Townsend v. Smith.

The conception of the invention consists in the complete performance of the mental part of the inventive act. All that remains to be accomplished in order to perfect the act or instrument belongs to the department of construction, not invention. It is therefore the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice that constitutes an available conception within the meaning of the patent law.

The definition raises the question, “When is an idea definite and permanent?” The courts have indicated that conception is complete when the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan he hopes to pursue. The idea must be such that it would enable a person of ordinary skill in the art to convert the idea to tangible form without extensive research. That is, conception is complete when one of ordinary skill in the art could make or use the invention without undue experimentation.

In the pharmaceutical and biotech areas, a more stringent definition of conception has been applied. Conception of a chemical compound requires that the inventor be able to define it so as to distinguish it from other materials, and to describe how to obtain it. Likewise, for complete conception of a DNA sequence, which can be viewed as a complex chemical compound, conception may not occur until reduction to practice takes place; i.e., until the gene is isolated and its sequence known.

There is no minimal level or quantity of contribution necessary to establish joint inventorship. A joint invention is simply the product of a collaboration between two or more persons working together to solve the problem. However, simply explaining to the inventors well-known concepts or the current state of the art, without an inventive act, does not allow one to become a joint-inventor. Likewise, merely performing experimental work to reduce the invention to practice does not allow one to become a joint-inventor. To be a joint inventor “an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.”

The law sets no explicit lower limit on the quantum or quality of inventive contribution required for a person to qualify as a joint inventor. Rather, a joint invention is simply the product of a collaboration between two or more persons working together to solve the problem addressed. It is recognized that the determination of whether a person is a joint inventor is fact specific, and no bright-line standard will suffice in every case. Nonetheless, the case law provides guidance as to what types of acts are, or are not, sufficient in quantum and quality to establish joint inventorship. A joint inventor must contribute in some significant manner to the conception of the invention.

Inventorship is a legal term rooted in both statute and in case law. The determination of who is an inventor is a legal determination. Leave the determination to the patent attorney or agent to make the determination.

In dealing internally with inventorship issues:

  • Consistent guidelines should be established on which inventorship is based.

  • The same standard should be applied for each application filed.

  • All the individuals involved in the project should be consulted or interviewed.

  • Contributions of individuals should be considered in view of the claims.

  • Documentation should be kept as to which claims an individual contributed as claims may be cancelled during prosecution.

  • The determination should be performed by a patent attorney or patent agent.
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    Murray Spruill is a partner with Alston & Bird LLP and is the chair of the firms Biotechnology and Pharmaceutical Patent Group. Dr. Spruill’s intellectual property law practice focuses on providing services relating to all areas of patent law. He can be reached at the Alston and Bird’s Raleigh office at mspruill@alston.com.